Appeal No. 2002-2039 Page 16
Application No. 09/258,712
Accordingly, we see no need in this decision to further discuss the teachings of the
applied prior art or the differences between the prior art and the claims at issue.
The appellants argue with respect to the obviousness rejections (brief, pp. 8-12;
reply brief, pp. 3-4) that there is no motivation in the applied prior art for one skilled in
the art to add the second guide of Ganser into either Moncelle or Anderson. We do not
agree.
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 appellant. 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
In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999). 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
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