Appeal No. 2006-1785 Page 17
Application No. 10/768,827
1039, 228 USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468,
1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d
1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
Motivation to modify Ryzl with McLain
Appellant argues that the examiner has failed to set forth a proper
motivation for combining Ryzl with McLain [brief, pages 22-30].
The examiner disagrees and asserts that one of ordinary skill in the art
at the time of invention would have been motivated to combine the
teachings because Ryzl teaches an emulator that executes an application
without explicitly teaching how the emulator executes the application
[answer, page 22]. The examiner asserts that there is an implicitly stated
need in Ryzl for a method of executing the application with the emulator, i.e.
responding to requests of the application with the emulator [id.]. The
examiner argues McLain meets the implicit deficiency of Ryzl by detailing the
function of an emulator [answer, page 23].
We note that the Court of Appeals for the Federal Circuit has
determined that the motivation to combine under § 103 must come from a
teaching or suggestion within the prior art, within the nature of the problem
to be solved, or within the general knowledge of a person of ordinary skill in
the field of the invention, to look to particular sources, to select particular
elements, and to combine them as combined by the inventor. Ruiz v. A.B.
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