Appeal No. 2006-1848
Application No. 10/352,360
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.
441 F.3d at 988, 78 USPQ2d at 1337 (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.
The Federal Circuit has repeatedly recognized that 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
Kahn, 441 F.3d at 987-88, 78 USPQ2d at 1336 (“the teaching,
motivation, or suggestion may be implicit from the prior art as a
whole, rather than expressly stated in the references”); and In re
Nilssen, 851 F.2d 1401, 1403, 7 USPQ2d 1500, 1502 (Fed. Cir. 1988)
(“for the purpose of combining references, those references need not
explicitly suggest combining teachings”). The court recently noted,
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. As precedent
illustrates, many factors are relevant to the
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