Appeal No. 2004-1520 Page 7
Application No. 09/957,058
reference. See Merck & Co v. Biocraft Laboratories, 874 F.2d 804, 807, 10 USPQ2d
1843, 1847 (Fed. Cir. 1989) (A reference may be relied upon for all that it would have
reasonably suggested to one having ordinary skill in the art, including non-preferred
embodiments); In re Heck, 699 F.2d 1331, 1333, 216 USPQ 1038, 1039 (Fed. Cir.
1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA
1968))(Use of a patent as a reference is not limited to what the patentee describes as
their own invention.). Nor do the reference disclosures need to fit together like pieces of
a puzzle. See In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981)(“The
test for obviousness is not whether the features of a secondary reference may be bodily
incorporated into the structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the references. Rather, the
test is what the combined teachings of the references would have suggested to those of
ordinary skill in the art.”); In re Bascom, 43 CCPA 837, 230 F.2d 612, 614, 109 USPQ
98, 100 (1956)(“[T]he proper inquiry should not be limited to the specific structure
shown by the references, but should be into the concepts fairly contained therein, and the
overriding question to be determined is whether those concepts would suggest to one
skilled in the art the modification called for by the claims.”). What is important is that
the prior art establishes that there was a reason, suggestion or motivation to make what is
claimed and that one of ordinary skill in the art would have had a reasonable expectation
of success in so carrying it out. See In re Dow Chem., 837 F.2d 469, 473, 5 USPQ2d
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007