Appeal No. 2006-2060 Page 6
Application No. 10/605,873
of the problem solved by the claimed invention, or to the knowledge of one of
ordinary skill in the art.”); and Kahn, 441 F.3d at 987-88, 78 USPQ2d at 1337-38
(“the teaching, motivation, or suggestion may be implicit from the prior art as a
whole, rather than expressly stated in the references”). In fact, 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. Johnston, 435 F.3d at 1385, 77 USPQ2d at 1790-91.
As such, we examined whether the prior art explicitly or implicitly
suggested the claimed combination. “’The test for an implicit showing is what the
combined teachings, knowledge of one of ordinary skill in the art, and the nature of
the problem to be solved as a whole would have suggested to those of ordinary
skill in the art.’” Kahn, 441 F.3d at 987-88, 78 USPQ2d at 1336 (quoting In re
Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1317 (Fed. Cir. 2000)).
The appellant argues that the cutters in English operate differently from the
cutting edge of Bowes, and as such, it is “highly unlikely that a person of ordinary
skill in the art would see an obvious combination of the two patents.” (Appellant’s
Reply Brief, p. 4). With regard to the operation of English, the appellant argues
that the capsule has no cutting edge between the cutters (12) and instead requires
the user to rotate the cutters (12) to cut the partition (4) away from flange (4).
(Appellant’s Reply Brief, p. 3). With regard to Bowes, the appellant argues that
the cutting edge (29) of the cutting cylinder (27) operates by first piercing the flat
bottom (16) at the one lowest point and then proceeds to cut around the edge of the
flat bottom (16) because of its cylindrical shape. (Appellant’s Reply Brief, p. 4).
While we recognize these differences in the operation of the two cutting
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