Appeal No. 2004-1671
Application No. 09/905,024
Williamson Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120,
1125, 56 USPQ2d 1456, 1459 (Fed. Cir. 2000)(“The suggestion to
combine need not be express and ‘may come from the prior art, as
filtered through the knowledge of one skilled in the art.’”quoting
Motorola, Inc. v. Interdigital Tech. Corp., 121 F.3d 1461, 1472, 43
USPQ2d 1481, 1489 (Fed. Cir. 1997)). 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.”)
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 1529, 1531 (Fed. Cir. 1988). The prior
art here suggests that other conveying systems including the
counter rotating belt system claimed were known for the function of
conveying cartons through equipment similar to that of Winn. That
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