Appeal No. 2006-2060 Page 5
Application No. 10/605,873
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 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.
(internal citations omitted).
For the reasons discussed below, we find that 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.
We first consider the problem facing the inventor. “In considering
motivation in the obviousness analysis, the problem examined is not the specific
problem solved by the invention but the general problem that confronted the
inventor before the invention was made. Kahn, 441 F.3d at 988, 78 USPQ2d at
1336 (citations omitted). In this case, the general problem confronting the inventor
was to devise a system for separate storage and subsequent mixing of two products.
With regard to the appellant’s argument that there is no teaching in English
or Bowes to provide the cutting edge between the prongs or cutters (Appellant’s
Brief, p. 6), we find this argument unpersuasive because, the references being
combined do not need to explicitly suggest combining their teachings to establish a
prima facie case of obviousness. See e.g., In re Johnston, 435 F.3d 1381, 1385, 77
USPQ2d 1788, 1790-91 (Fed. Cir. 2006) (citing Medical Instrumentation and
Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1221-22 (Fed. Cir. 2003)) (“[t]he
suggestion or motivation to combine references does not have to be stated
expressly; rather it may be shown by reference to the prior art itself, to the nature
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