Appeal No. 2001-1628 Page 6
Application No. 09/054,794
element of a claimed invention may often be found in the prior art. See id. However,
identification in the prior art of each individual part claimed is insufficient to defeat
patentability of the whole claimed invention. See id. Rather, to establish obviousness
based on a combination of the elements disclosed in the prior art, there must be some
motivation, suggestion or teaching of the desirability of making the specific combination
that was made by the appellants. See In re Dance, 160 F.3d 1339, 1343, 48 USPQ2d
1635, 1637 (Fed. Cir. 1998); In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127
(Fed. Cir. 1984).
The motivation, suggestion or teaching may come explicitly from statements in
the prior art, the knowledge of one of ordinary skill in the art, or, in some cases the
nature of the problem to be solved. See Dembiczak, 175 F.3d at 999, 50 USPQ2d at
1617. In addition, the teaching, motivation or suggestion may be implicit from the prior
art as a whole, rather than expressly stated in the references. See WMS Gaming, Inc.
v. International Game Tech., 184 F.3d 1339, 1355, 51 USPQ2d 1385, 1397 (Fed. Cir.
1999). The test for an implicit showing is what the combined teachings, knowledge of
one of ordinary skill in the art, and the nature of the problem to be solved as a whole
would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d
413, 425, 208 USPQ 871, 881 (CCPA 1981) (and cases cited therein). Whether the
examiner relies on an express or an implicit showing, the examiner must provide
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007