Appeal No. 1997-4290
Application No. 08/218,647
are removed. However, in the bleaching of mechanical pulp the lignin is retained.5
Thus, the mechanism for bleaching chemical pulp is directly opposite the
mechanism for bleaching mechanical pulp. Consequently, we determine that one of
ordinary skill in the art would not have been motivated to combine the teachings of
Andersson ‘590 and Lachenal as suggested by the Examiner.
In holding an invention obvious in view of a combination of references, there
must be some suggestion, motivation, or teaching in the prior art that would have
led a person of ordinary skill in the art to select the references and combine them in
the way that would produce the claimed invention. See, e.g., Heidelberger
Druckmaschinen AG v. Hantscho Commercial Prods., Inc., 21 F.3d 1068, 1072,
30 USPQ2d 1377, 1379 (Fed. Cir. 1994) (When the patent invention is made by
combining known components to achieve a new system, the prior art must provide a
suggestion, or motivation to make such a combination.); Northern Telecom v.
Datapoint Corp., 908 F.2d 931, 934, 15 USPQ2d 1321, 1323 (Fed. Cir. 1990) (It is
insufficient that the prior art disclosed the components of the patented device, either
separately or used in other combinations; there must be some teaching, suggestion,
or incentive to make the combination made by the inventor.); Uniroyal, Inc. v.
5 Kirk-Othmer, Encyclopedia of Chemical Technology, vol. 19 (3rd ed. 1979) 413.
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