Interference No. 104,649
Page No. 42
showing of a suggestion, teaching, or motivation to combine the prior art
references is an 'essential component of an obviousness holding"') (quoting CR.
Bard, Inc., v. M3 Systems, Inc., 157 F.3d 1340,1352, 48 USPQ2d 1225, 1232
(Fed. Cir. 1998)); In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614,
1617(Fed. Cir. 1999) ("Our case law makes clear that the best defense against the
subtle but powerful attraction of a hindsight-based obviousness analysis is
rigorous application of the, requirement for a showing of the teaching or
motivation to combine prior art references."); In re Dance, 160 F.3d 1339, 1343,
48 USPQ2d 1635, 1637 (Fed. Cir. 1998) (there must be some motivation,
suggestion, or teaching of the desirability of making the specific combination that
was made by the applicant); In re Fine, 837 F.2d 1071, 1075, 5 USPQ2d 1596,
1600 (Fed. Cir. 1988) ( ...teachings of references can be combined only if there is
some suggestion or incentive to do so."') (emphasis in original) (quoting ACS
Hosp. Sys., Inc. v. Montefliore Hosp., 732 F.2d 1572,1577, 221 USPQ 929, 933
(Fed. Cit. 1984)).
In re Lee, 277 F.3d 1338, 1343, 61 USPQ2d 1430, 1433 (Fed. Cir. 2002).
Even accepting Keagy's interpretation of the teachings of the prior art, Keagy has failed
to direct our attention to "some motivation, suggestion, or teaching" for making the specific
combination of elements claimed by Zhou. At best, Keagy has demonstrated that if one desired
to make Zhou's claimed invention more compact, one skilled in the art could use the mirrors of
Ranalli to achieve that goal. Keagy, however, has failed to demonstrate that the prior art in
combination with Zhou claim 10 guides one skilled in the art to make Zhou's device more
"compact."
Zhou has argued that the prior art in combination with Zhou claim 10 fails to teach,
disclose or suggest the claimed combination of elements recited in Zhou claims 14-17 and 28.
On the facts presented, we agree with Zhou. As such, Zhou Preliminary Motion 4 is granted.
The Count and the parties' revised claim correspondence are set forth in Appendix A.
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