Appeal 2006-1849
Application 10/387,139
provide motivation for combining the second turbine with Christians’
integrated environmental control system (Reply Br. 2).
We agree with the Examiner’s ultimate determination that claim 1 is
unpatentable over Christians in view of Hipsky.
Generally, “evidence of a motivation to combine need not be found in
prior art references themselves, but rather may be found in the knowledge of
one of ordinary skill in the art, or, in some cases from the nature of the
problem to be solved.” Dystar Textilfarben GMBH & Co. v. C.H. Patrick
Co., 464 F.3d 1356, 1366, ____ USPQ2d ____, ____ (Fed. Cir. 2006).
“Common knowledge and common sense” are sufficient to establish
motivation to combine without any additional suggestion or hint in a
particular reference where the Examiner has first established that knowledge
of a claimed feature is in the art. Id. 464 F.3d at 1367 (citing In re Bozek,
416 F.2d 1385, 1390 (C.C.P.A. 1969)).
Moreover, implicit motivation to combine exists not only when a
suggestion may be gleaned from the prior art as a whole, but when the
“improvement” is technology-independent and the combination of
references results in a product that is more desirable, for example because it
is stronger, cheaper, faster, lighter, smaller, more durable or more efficient.
Dystar, 464 F.3d at 1368. “Because the desire to enhance commercial
opportunities by improving a product or process is universal -- and even
common-sensical -- we have held that there exists in these situations a
motivation to combine prior art references even absent any hint of
suggestion in the references themselves.” Id. In those situations, “the proper
question is whether the ordinary artisan possesses knowledge and skills
rendering him capable of combining the prior art references.” Id.
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