Appeal No. 2006-0742 Page
Reexamination Control No. 90/006,013 5
IV. Discussion
A. The legal standard
Obviousness is a legal conclusion based on the totality of the evidence.
Richardson-Vicks, Inc. v. Upjohn Co., 122 F.3d 1476, 1483, 44 USPQ2d 1181,
1187 (Fed. Cir. 1997), including underlying factual inquiries such as (1) the scope
and content of the prior art, (2) the level of ordinary skill in the art, (3) the
differences between the claimed invention and the prior art, and (4) objective
evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17-18,
148 USPQ 459, 467 (1966). An obviousness analysis under § 103 also requires
consideration of whether there is some suggestion or motivation in the prior art to
modify the reference or to combine reference teachings, whether there is a
reasonable expectation of success, and whether the prior art reference(s)
teaches or suggests all of the claim limitations. In re Vaeck, 947 F.2d 488, 493,
20 USPQ2d 1438, 1442 (Fed. Cir. 1991). A determination of obviousness cannot
be based on a hindsight combination of components selectively culled from the
prior art to fit the limitations of the claimed invention. However, "evidence of a
suggestion, teaching, or motivation to combine may flow from the prior art
references themselves, the knowledge of one of ordinary skill in the art, or, in
some cases, from the nature of the problem to be solved." In re Dembiczak, 175
F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999). Regardless of the
source of the suggestion, teaching or motivation, the evidentiary showing must
be clear and particular, i.e., broad conclusory statements, standing alone, are not
sufficient.
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007