Appeal No. 2006-2627 Page 46
Application No. 09/947,833
1996) (“[w]e start from the self-evident proposition that mankind, in particular, inventors,
strive to improve that which already exists”.) As the court in Dystar explains
[b]ecause the desire to enhance commercial opportunities by improving a
product or process is universal – and even common-sensical – we have
held that there exists in these situations a motivation to combine prior art
references even absent any hint of suggestion in the references
themselves. In such situations, the proper question is whether the
ordinary artisan possesses knowledge and skills rendering him capable of
combining the prior art references.
Dystar, 464 F.3d at 1368, 80 USPQ2d at 1651.
While the majority is satisfied to simply assert that “the cited references would
[not] have suggested the instantly claimed composition to those of ordinary skill in the
art,” the majority makes no attempt to consider all the teachings of the prior art on this
record, or what the level of skill in the art was at the time of appellants’ claimed
invention. I do not find it sufficient to simply proclaim that a fact-based reasoned
analysis of the evidence on this record is based on hindsight reconstruction and then
stick your head in the sand to avoid any consideration of all the evidence of record, and
what a person of ordinary skill in the this art knew and understood at the time
appellants’ invention was made. Unlike anticipation, where all the elements of a
claimed invention are to be found in a single prior art reference48, the issue before this
panel is obviousness. An obviousness analysis requires that the evidence be
considered through the lens of a person of ordinary skill in the art.49
48 “Under 35 U.S.C. § 102, every limitation of a claim must identically appear in a single prior art reference
for it to anticipate the claim.” Gechter v. Davidson, 116 F.3d 1454, 1457, 43 USPQ2d 1030, 1032 (Fed.
Cir. 1997).
49 Obviousness is determined in terms of the level of skill of a person having ordinary skill in the art at the
time the invention was made. 35 U.S.C. § 103; Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ
459, 467 (1966).
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