Appeal No. 2006-2084
Reexamination Control No. 90/006,360
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." Id. at 988, 78 USPQ2d at 1337. Motivation to combine
references “may come explicitly from statements in the prior art, the knowledge of
one of ordinary skill in the art, or, in some cases the nature of the problem to be
solved.” In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1317 (Fed. Cir.
2000). Whether there is motivation to combine the references is a question of fact
drawing on the factors of Graham v. John Deere Co., 383 U.S. 1, 17-18, 148
USPQ 459, 467 (1966). See McGinley v. Franklin Sports, Inc., 262 F.3d 1339,
1351-52, 60 USPQ2d 1001, 1008 (Fed. Cir. 2001) (motivation is not limited to the
first Graham factor); Kahn, 441 F.3d at 986, 78 USPQ2d at 1335 ("[Motivation]
entails consideration of both the 'scope and content of the prior art' and 'level of
ordinary skill in the pertinent art' aspects of the Graham test.").
The problem facing the inventor was the design of small-shank vertical tools
having interchangeable tool inserts for an automatic lathe, where "small-shank"
refers to shanks having a width of less than approximately 9 mm, and preferably
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