Appeal No. 2006-1149
Application No. 10/296,406
the “differences between the prior art and the claims at issue,” and must resolve, “the level of
ordinary skill in the pertinent art.” In re Kahn, 441 F.3d 977, 985, 78 USPQ2d 1329, 1335
(Fed. Cir. 2006) citing Dann v. Johnston 425 U.S. 219, 226 (1976) (quoting Graham v. John
Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966)).
In so doing, the examiner is expected to make the factual determinations set forth in
Graham v. John Deere Co. and to provide a reason why one having ordinary skill in the
pertinent art would have been led to modify the prior art or to combine prior art references to
arrive at the claimed invention. Id. Such reason must stem from some teaching, suggestion
or implication in the prior art as a whole or knowledge generally available to one having
ordinary skill in the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5
USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988); Ashland Oil, Inc. v. Delta
Resins & Refractories, Inc., 776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572,
1577, 221 USPQ 929, 933 (Fed. Cir. 1984).
The teaching or suggestion to make the claimed combination must be found in the
prior art and may not be based on the application disclosure. In re Vaeck, 947 F.2d 488, 20
USPQ2d 1438 (Fed. Cir. 1991). The prior art can be modified or combined to reject claims
as prima facie obvious as long as there is a reasonable expectation of success. Medchem
S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006); In re Merck & Co., Inc., 800
F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). To establish prima facie obviousness of a
claimed invention, all the claim limitations must be taught or suggested by the prior art. In re
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