Appeal No. 2003-2105 Page 8
Application No. 08/755,928
pads "negates anticipation." Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565,
1571, 230 USPQ 81, 84 (Fed. Cir. 1986).
3. OBVIOUSNESS DETERMINATION
The next inquiry is whether the subject matter would have been obvious. “[T]o
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 applicants.” In re Kotzab, 217 F.3d 1365,
1370, 55 USPQ2d 1313, 1316 (Fed. Cir. 2000) (citing 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)). “[T]he factual inquiry whether to combine
references must be thorough and searching.” McGinley v. Franklin Sports, Inc., 262
F.3d 1339, 1351-52, 60 USPQ2d 1001, 1008 (Fed. Cir. 2001). “This factual
question . . . [cannot] be resolved on subjective belief and unknown authority.” In re
Lee, 277 F.3d 1338, 1343-44, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002). “It must be
based on objective evidence of record.” Id. at 1343, 61 USPQ2d at 1434.
Here, Yukawa addresses a problem facing analog/digital hybrid devices.
Specifically, "[i]n a complementary MOS analog/digital hybrid large scale
integrated (LSI) device, digital circuits where voltages are fully swung and analog
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