Appeal No. 2006-1817 Page 11
Application No. 09/851,514
invention, or to the knowledge of one of ordinary skill in the art.”); and Kahn, 441
F.3d at 987-88, 78 USPQ2d at 1337-38 (“the teaching, motivation, or suggestion
may be implicit from the prior art as a whole, rather than expressly stated in the
references”). In fact, an explicit teaching that identifies and selects elements from
different sources and states that they should be combined in the same way as in the
invention at issue, is rarely found in the prior art. Johnston, 435 F.3d at 1385, 77
USPQ2d at 1790-91. As such, we examined whether the prior art explicitly or
implicitly suggested the claimed combination. “’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.’” Kahn, 441 F.3d at 987-88, 78 USPQ2d at 1336 (quoting
In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1317 (Fed. Cir. 2000)).
Although there is no explicit teaching in the prior art to combine Gerace,
Harhen and Deaton, we find that a suggestion to combine the references is implicit
from the prior art as a whole. This implicit suggestion satisfies the requirement for
a teaching, suggestion, or motivation for making the necessary modifications to the
method of Gerace.
Specifically, we find sufficient motivation to combine the teachings of the
prior art, because the prior art Gerace and Deaton systems, which relate to
marketing campaign planning and optimization of campaign plans (Examiner’s
Answer, pp. 5 and 6), are directly in the field of the appellants’ endeavor, and
because the subject matter of the Harhen reference, which is directed to the general
field of strategic planning for business enterprises, is in a related field of
technology to that of the claimed subject matter. In particular, marketing campaign
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