Appeal No. 2003-0523
Application No. 09/100,952
Young’s description of manually controlled recording, and likely the description of
express recording, teaches the recording of a program currently being broadcast.
Lawler, also teaching recording of a current broadcast program, may thus be viewed as
merely cumulative in the teachings of the applied references.
We agree with the examiner’s finding2 that the combined teachings of Young and
Yuen would have suggested maintaining the viewing of the currently-viewed broadcast
program in a PIP window, to avoid interruption of viewing of the program while viewing
the menu displays described by Young. Suggestion for combination may come
explicitly from the statements in the prior art. However, contrary to appellants’ view,
there is no requirement that the prior art contain an express suggestion to combine
known elements to achieve the claimed invention. Rather, the suggestion to combine
may come from the prior art, as filtered through the knowledge of one skilled in the art.
Motorola, Inc. v. Interdigital Tech. Corp., 121 F.3d 1461, 1472, 43 USPQ2d 1481, 1489
(Fed. Cir. 1997); see also Cable Elec. Prods., Inc. v. Genmark, Inc., 770 F.2d 1015,
1025, 226 USPQ 881, 886-87 (Fed. Cir. 1985) (“[T]he suggestion to modify the art to
produce the claimed invention need not be expressly stated in one or all of the
references used to show obviousness. ‘Rather, the test is what the combined teachings
2 The presence or absence of a motivation to combine references in an obviousness
determination is a pure question of fact. In re Gartside, 203 F.3d 1305, 1316, 53 USPQ2d 1769, 1776
(Fed. Cir. 2000).
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