Appeal No. 2006-0367
Application No. 10/353,506
C. DISCUSSION
With the aforementioned findings of fact, in mind, rather than reiterate the
positions of the appellants in toto, we focus on their three points of contention:
· motivation to combine teachings of Kohl and Forester
· motivation to combine teachings of Kohl and Chang
· alleged disincentive to densify.
1. MOTIVATION TO COMBINE TEACHINGS OF KOHL AND FORESTER
The appellants argue that "the only thing in Forester that could be considered
with respect to the rationale to use densification here would be a vague reference to
uniformity." (Appeal Br. at 9.)
"The presence or absence of a motivation to combine references in an
obviousness determination is a pure question of fact." In re Gartside, 203 F3d 1305,
1316, 53 USPQ2d 1769, 1776 (Fed. Cir. 2000) (citing In re Dembiczak, 175 F.3d 994,
1000, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999)). A suggestion to combine teachings
from the prior art "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." WMS Gaming Inc. v. Int'l Game Tech., 184 F.3d 1339, 1355,
51 USPQ2d 1385, 1397 (Fed. Cir. 1999) (citing In re Rouffet, 149 F.3d 1350, 1355, 47
USPQ2d 1453, 1456 (Fed. Cir. 1998)).
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