Appeal No. 2005-2178
Application 09/969,882
Tisdale demonstrates the economic value in residual fertilizers remaining in the plant growing
medium.
Thus, as the examiner argues, one of ordinary skill in this art would have reasonably
taken advantage of the residual fertilizers in the potting mix by growing fewer plants from seeds
or seedlings in the reasonable expectation of growing the plants to harvest in order to reap the
economic benefits embodied in the residual fertilizers and potting mix, which is all that the
claimed processes of appealed claims 14 and 17 require in these respects as we have interpreted
these claims above. See generally, Pro-Mold & Tool Co. v. Great lakes Plastics Inc., 75 F.3d
1568, 1573, 37 USPQ 1626, 1629-30 (Fed. Cir. 1996) (“In this case, the reason to combine [the
references] arose from the very nature of the subject matter involved, the size of the card
intended to be enclosed.”); In re Gorman, 933 F.2d 982, 986-87, 18 USPQ2d 1885, 1888-89
(Fed. Cir. 1991) (“The extent to which such suggestion [to select elements of various teachings
in order to form the claimed invention] must be explicit in, or may be fairly inferred from, the
references, is decided on the facts of each case, in light of the prior art and its relationship to the
applicant’s invention.”); In re Dow Chem. Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed.
Cir. 1988) (“The consistent criterion for determination of obviousness is whether the prior art
would have suggested to one of ordinary skill in the art that [the claimed] process should be
carried out and would have a reasonable likelihood of success, viewed in light of the prior art.
[Citations omitted] Both the suggestion and the expectation of success must be founded in the
prior art, not in the applicant’s disclosure.”); Sovish, 769 F.2d at 743, 226 USPQ at 774 (skill
must be presumed on the part of those skilled in the art); 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 Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA
1969) (the conclusion of obviousness may be made from “common knowledge and common
sense” of the person of ordinary skill in the art and what the combination of references would
have suggested to this person); see also In re Thompson, 545 F.2d 1290, 1294, 192 USPQ 275,
277 (CCPA), citing In re Clinton, 527 F.2d 1226, 1228, 188 USPQ 365, 367 (CCPA 1976)
- 13 -
Page: Previous 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 Next
Last modified: November 3, 2007