Appeal No. 2006-1342
Application No. 09/488,471
To reach a proper conclusion under 35 U.S.C. § 103, the decision maker must step
backward in time and into the shoes worn by [a person having ordinary skill in the art] when the
invention was unknown and just before it was made. In light of all the evidence, the decision
maker must then determine whether the claimed invention as a whole would have been obvious
at that time to that person. The answer to that question partakes more of the nature of law than
of fact, for it is an ultimate conclusion based on a foundation formed of all the probative facts.
The test for obviousness is based on the claimed invention as a whole and not upon mere
combination of prior art references. Creative Pioneer Products Corp. v. K Mart Corp., 1987 WL
54482 (S.D. Tex), 5 USPQ2d 1841 (DC S.Texas 1987).
The presence or absence of a motivation to combine references in an obviousness
determination is a pure question of fact. In re Gartside, 203 F.3d 1305, 1316, 53 USPQ2d 1769,
1776 (Fed. Cir. 2000). The question is whether there is something in the prior art as a whole to
suggest the desirability, and thus the obviousness, of making the combination. In re Beattie, 974
F.2d 1309, 1311-12, 24 USPQ2d 1040, 1042 (Fed. Cir. 1992). 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.
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