Appeal No. 2006-1848
Application No. 10/352,360
lines 32-34). Moreover, Elliott has a closed
top, such that even if Carter and Elliott were
to be combined, the closed top would result,
which would also preclude obviousness.
(Appellant’s Brief, p. 4) (emphasis in original).
We disagree with the Appellant’s position.
In order to determine whether a prima facie case of obviousness
has been established, we considered the three factors set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966), viz., (1) the scope
and content of the prior art; (2) the differences between the prior art
and the claims at issue; and (3) the level of ordinary skill in the art.
We also considered the requirement, as recently re-stated in In re
Kahn, 441 F.3d 977, 78 USPQ2d 1329 (Fed. Cir. 2006), for a showing
of a “teaching, suggestion, or motivation” to modify or combine the
prior art teaching. As to this test, the court explained,
The ‘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
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