Appeal No. 2005-2753
Application No. 09/730,238
case law, except for the requirement to show a reasonable expectation of success in electrical
cases as discussed in connection with point B, infra. And, while the suggestion, teaching, or
motivation to combine must be based on objective evidence of record, rather than common
knowledge or common sense, the Federal Circuit recently made it clear that the suggestion
does not have to be expressly stated in the references, but may be implicit from the prior art
as a whole. See In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006),
citing In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313 (Fed. Cir. 2000). The
implication by appellant that there must be an express teaching in the references to make the
proposed modification or combination is incorrect.
Our opinion relied on the concrete evidence provided by the applied references as
required by Zurko in reaching our determination of obviousness of the instant claimed
subject matter. For example, with regard to instant independent claim 1, we explained, at
pages 7-9 of our opinion, how the structure of Herwig, together with Flannery’s teaching of
an internal power supply for the USB hub, would have led the artisan to connect power
supply 112, in Herwig, to the USB hub 114, in Herwig, to provide a self-powered alternative
to a USB cable provided power supply. We note that appellant has pointed to no error in our
analysis in his request for rehearing.
Appellant does not state why our opinion does not comply with Lee’s requirement
that the factual inquiry whether to combine references must be thorough and searching and
must be based on objective evidence of record. Again, using our analysis of the applied
references and how they are applied against instant claim 1, at pages 7-9 of our opinion, we
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