Appeal No. 2006-2060 Page 4
Application No. 10/605,873
of English that the cutters (12) of English must be rotated to cut the partition from
the flange. As such, the capsule of English does not appear to have a cutting edge
like that claimed by the appellant on its second member. Accordingly, we do not
sustain the rejection of claims 1, 2, and 4 as being anticipated by English.
Turning next to the rejection of claims 1-4 as being unpatentable over
Bowes in view of English, the examiner has determined that Bowes discloses all of
the elements of claim 1 except for the cutting element comprising a first prong and
a second prong disposed along a peripheral edge of the second member and having
a cutting edge disposed between the prongs. The examiner finds that it would have
been obvious to one having ordinary skill in the art at the time the invention was
made to modify the cutting element of Bowes with two prongs as taught in English
“to facilitate cutting the closed bottom of the first member.” (Examiner’s Answer,
pp. 5 and 7). The appellant argues: (1) there is no motivation to combine the
references; (2) there is no teaching in either reference to modify the device of
Bowes with the cutters of English; and (3) even if a person of ordinary skill in the
art combined Bowes with English, one would not arrive at the claimed invention.
(Appellant’s Brief, p. 6 and Appellant’s Reply Brief, p. 4).
The requirement of a showing of a “teaching, suggestion, or motivation” to
modify or combine the prior art teachings was recently described in In re Kahn,
441 F.3d 977, 988, 78 USPQ2d 1329, 1337 (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
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