Appeal No. 2006-1817 Page 10
Application No. 09/851,514
combine the prior art teachings. This requirement was recently described in In re
Kahn, 441 F.2d 977, 78 USPQ2d 1329 (Fed. Cir. 2006):
[T]he “motivation-suggestion-teaching” test asks not
merely what the references disclose, but whether a person
of ordinary skill in the art, possessed with the
understandings and knowledge reflected in the prior art,
and motivated by the general problem facing the
inventor, would have been led to make the combination
recited in the claims. From this it may be determined
whether the overall disclosures, teachings, and
suggestions of the prior art, and the level of skill in the
art – i.e., the understandings and knowledge of persons
having ordinary skill in the art at the time of the
invention-support the legal conclusion of obviousness.
(internal citations omitted).
Id. at 988, 78 USPQ2d at 1337.
“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.” Kahn, 441 F.3d at 988,
78 USPQ2d at 1336 (citations omitted). In this case, the general problem facing
the inventor was to develop campaign plans that optimize differential promotion
allocation among prospective customers.
To establish a prima facie case of obviousness, the references being
combined do not need to explicitly suggest combining their teachings. See e.g., In
re Johnston, 435 F.3d 1381, 1385, 77 USPQ2d 1788, 1790-91 (Fed. Cir. 2006)
(citing Medical Instrumentation and Diagnostics Corp. v. Elekta AB, 344 F.3d
1205, 1221-22 (Fed. Cir. 2003)) (“[t]he suggestion or motivation to combine
references does not have to be stated expressly; rather it may be shown by
reference to the prior art itself, to the nature of the problem solved by the claimed
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