Appeal No. 2006-2084
Reexamination Control No. 90/006,360
Analysis
"In determining whether a combination of old elements is non-obvious, the
court must assess whether, in fact, an artisan of ordinary skill in the art at the time
of invention, with no knowledge of the claimed invention, would have some
motivation to combine the teachings of one reference with the teachings of another
reference." Cross Medical Products, Inc. v. Medtronic Sofamor Danek, Inc.,
424 F.3d 1293, 1321, 76 USPQ2d 1662, 1684 (Fed. Cir. 2005). "[T]he best
defense against the subtle but powerful attraction of a hindsight-based obviousness
analysis is rigorous application of the requirement for a showing of the teaching or
motivation to combine the references." In re Dembiczak, 175 F.3d 994, 999, 50
USPQ2d 1614, 1617 (Fed. Cir. 1999). The Board must articulate the reasons why
one of ordinary skill in the art would have been motivated to select the references
and to combine them to render the claimed invention obvious. In re Kahn,
441 F.3d 977, 986, 78 USPQ2d 1329, 1335 (Fed. Cir. 2006). Motivation may be
found expressly or implicitly in the references. Id. at 987-88, 78 USPQ2d at 1336.
"[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
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