Appeal No. 2004-1671
Application No. 09/905,024
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.). Moreover, “[a] prior art
reference must be ‘considered together with the knowledge of one of
ordinary skill in the pertinent art.’” In re Paulsen, 30 F.3d
1475, 1480, 31 USPQ2d 1671, 1675 (Fed. Cir. 1994)(citing In re
Samour, 571 F.2d 559, 562, 197 USPQ 1, 3-4 (CCPA 1978)). “A patent
need not teach, and preferably omits, what is well known in the
art.” Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d
1367, 231 USPQ 81 (Fed. Cir. 1986), cert. denied, 480 U.S. 947
(1987). For the above, reasons, the inquiry is not limited to the
specific structures expressly described in the references but is
expanded to the concepts fairly contained therein. See 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.”). Nor is it
proper to require the references themselves to express the reason,
suggestion, or motivation for making the modification. See Brown &
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