Appeal No. 2006-2826 Page 13
Application No. 09/993,907
The teaching, suggestion or motivation to combine the references does not have
to be explicitly disclosed in the prior art cited against the claimed subject matter. “[T]he
teaching, motivation, or suggestion may be implicit from the prior art as a whole, rather
than expressly stated in the references. 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 987-988, 78 USPQ2d at 1336.
The Examiner stated that it would have been obvious to have utilized Cleary’s
hydrogel polymer as the coating for a medical device for its properties as biocompatible
polymer. Appellants admitted in the specification that medical devices coated with
hydrogel’s were known in the art prior to the application’s filing date. Specification, ¶
21. The scope and content of the prior art (Weissleder, but also DiCosmo and
Whitbourne) would have reasonably suggested to the skilled worker that any
biocompatible polymer could be utilized to coat a medical device, including the polymer
described by Cleary. It does not change our mind that Cleary teaches the polymer for
medical dressings, while the claimed subject matter is directed to medical devices. A
skilled worker would have been charged with knowledge of its chemical properties since
both are in the medical field. In re Dillon, 919 F.2d 688, 694 16 USPQ2d 1897, 1902
(Fed. Cir. 1990) (en banc).
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