Appeal No. 2006-1795 5
Application No. 10/269,057
441 F.3d at 988, 78 USPQ2d at 1336 (internal citations omitted). It is not just the explicit
teachings of the art itself, but also the understandings and knowledge of persons having
ordinary skill in the art, that play a role in applying the motivation-suggestion-teaching
test.
“In considering motivation in the obviousness analysis, the problem examined is
not the specific problem solved by the invention but the general problem that confronted
the inventor before the invention was made. In re Kahn, 441 F.3d at 988, 78 USPQ2d at
1336 (citations omitted). In this case, the general problem confronting the inventors was
to make an ultrasonic sealing apparatus and method for use in a filling/packing machine
for producing containers containing liquid beverages and the like where the sealing
apparatus and method produce excellent sealability. (See specification, page 2, lines
12-14 and page 8, lines 9-10).
In view of this general problem confronting the inventor, and the teachings of the
prior art, we find that there would have been no motivation for one skilled in the art at the
time of the invention to combine Kreager, which relates to an ultrasonic apparatus for
sealing bags of chips and the like, with the teachings of Voller, which relates to a radio
frequency sealing method to produce a stronger seal between two plastic sheets.
The mere fact that references can be combined or modified does not render the
resultant combination obvious unless the prior art also suggests the desirability of the
combination. In re Mills, 916 F.2d 680, 16 USPQ2d 1430 (Fed. Cir. 1990). Although a
prior art device “may be capable of being modified to run the way the apparatus is
claimed, there must be a suggestion or motivation in the reference to do so.” 916 F.2d at
682, 16 USPQ2d at 1432. See also In re Fritch, 972 F.2d 1260, 23 USPQ2d 1780 (Fed.
Cir. 1992).
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