Appeal No. 2004-1219 Page 6
Application No. 10/115,632
The test for obviousness is what the combined teachings of the references would
have suggested to one of ordinary skill in the art without the use of impermissible hindsight
knowledge. As set forth in Ecolochem, Inc. v. Southern California Edison, 227
F.3d 1361, 1375, 56 USPQ2d 1065, 1075 (Fed. Cir. 2000):
"[T]he suggestion to combine may be found in explicit or implicit teachings within the
references themselves, from the ordinary knowledge of those skilled in the art, or
from the nature of the problem to be solved." … However, there still must be
evidence that "a skilled artisan, confronted with the same problems as the inventor
and with no knowledge of the claimed invention, would select the elements from the
cited prior art references for combination in the manner claimed." … "[A] rejection
cannot be predicated on the mere identification … of individual components of
claimed limitations. Rather particular findings must be made as to the reason the
skilled artisan, with no knowledge of the claimed invention, would have selected
these components for combination in the manner claimed."…. [Citations omitted].
Thus, the issue before us is whether the combined teachings of the applied prior art (i.e.,
Moore and the Admitted Prior Art) teaches or suggests the playing of the conventional
game of craps on a slot machine without the use of impermissible hindsight knowledge.
It remains our opinion that there is sufficient suggestion, teaching or motivation in
the applied prior art to arrive at the subject matter of claim 1.6 In that regard, Moore clearly
6 The teaching, motivation or suggestion may be implicit from the prior art as a whole, rather than
expressly stated in the references. See WMS Gaming, Inc. v. International Game Tech., 184 F.3d 1339,
1355, 51 USPQ2d 1385, 1397 (Fed. Cir. 1999).
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