Appeal No. 2006-2280 Page 20
Application No. 10/244,011
curved surface. The appellant further argues that Finegan does not cure the
deficiencies of Carpenter and that one skilled in the art would not think of
combining Finegan with Carpenter in the absence of the appellant’s teachings.
Brief, pp. 15-16. The motivation-suggestion-teaching test for obviousness 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
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).
The court further explained that the general problem facing the inventor in this
analysis “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 to be solved was to develop a mechanism for preventing a cane or crutch
from falling when not in use. We agree with the appellant that a person having
ordinary skill in the art at the time of the invention, possessed with the teaching of
Carpenter to attach the cane to a user’s belt and the teaching of Finegan to attach
an adjustable grip to a golf club, would not have been led to solve the problem
facing the invention by making the support recited in the claims absent hindsight.
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