Appeal No. 2005-0808 Page 5
Application No. 09/863,439
(Fed. Cir. 2000):
A critical step in analyzing the patentability of claims pursuant to section
103(a) is casting the mind back to the time of invention, to consider the
thinking of one of ordinary skill in the art, guided only by the prior art
references and the then-accepted wisdom in the field. [ ] Close adherence
to this methodology is especially important in cases where the very ease
with which the invention can be understood may prompt one “to fall victim
to the insidious effect of a hindsight syndrome wherein that which only the
invention taught is used against its teacher.” [ ]
[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 applicant. [citations omitted]
In other words, “there still must be evidence that ‘a skilled artisan, . . . with no
knowledge of the claimed invention, would select the elements from the cited prior art
references for combination in the manner claimed.’” Ecolochem Inc. v. Southern
California Edison, 227 F.3d 1361, 1375, 56 USPQ2d 1065, 1075-76 (Fed. Cir. 2000).
The fact that the prior art could have been modified in a manner consistent with
appellant’s claims would not have made the modification obvious unless the prior art
suggested the desirability of the modification. In re Gordon, 733 F.2d 900, 902, 221
USPQ 1125, 1127 (Fed. Cir. 1984). On this record, the only reason or suggestion to
combine the references in the manner required by even the broadest claim comes from
appellant’s specification.
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