Appeal No. 2006-1738 Page 7
Application No. 10/059,564
evidence of obviousness.” In re Sang Su Lee, 277 F.3d 1338, 1343, 61 USPQ2d 1430,
1433 (Fed. Cir. 2002). A suggestion, teaching, or motivation to combine the relevant
prior art teachings does not have to be found explicitly in the prior art. “[T]he teaching,
motivation, or suggestion may be implicit from the prior art as a whole, rather than
expressly stated in the references. The test for an implicit showing is what the
combined teachings, knowledge of one of ordinary skill in the art, and the nature of the
problem to be solved as a whole would have suggested to those of ordinary skill in the
art.” In re Kahn, 441 F.3d 977, 987-988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006).
Since Minagawa describes a pressure of “about 10 to about 500 kg/cm2” as a step in a
conventional tabletting process for termite bait, the skilled worker would have been
motivated with a reasonable expectation of success to have applied it for the purpose of
compressing cellulose termite bait, which is described in both Richardson and
Minagawa as a bait ingredient. The resulting cellulose bait compositions would
reasonably be expected to possess densities that overlap with the claimed compositions
in compacted form.
In concluding that the claims are obvious, we do not rely on the examiner’s
findings regarding motivation. Prima facie obviousness has been found when the
claimed range and the prior art range do not overlap, but are close enough that one
skilled in the art would have expected them to have the same properties, shifting the
burden to the applicant to show they are different. Titanium Metals Corp. v. Banner,
778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985); In re Geisler, 116 F.3d 1465,
1469, 43 USPQ2d 1362, 1365-1366 (Fed. Cir. 1997). As discussed above, we find that
the prior art range of “about 10 to about 500 kg/cm2” overlaps with, or is at least close
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