Appeal 2006-1143
Application 10/256,703
PRINCIPALS OF LAW
Precedent requires that to find a combination obvious there must be some
teaching, suggestion, or motivation in the prior art to select the teachings of separate
references and combine them to produce the claimed combination. In re Johnston,
435 F.3d 1381, 1384, 77 USPQ2d 1788, 1790 (Fed. Cir. 2006) (citing Karsten Mfg.
Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1385, 58 USPQ2d 1286, 1293 (Fed. Cir.
2001) ("In holding an invention obvious in view of a combination of references, there
must be some suggestion, motivation, or teaching in the prior art that would have led a
person of ordinary skill in the art to select the references and combine them in the way
that would produce the claimed invention.")); In re Dance, 160 F.3d 1339, 1343,
48 USPQ2d 1635, 1637 (Fed. Cir. 1998) ("When the references are in the same field as
that of the applicant's invention, knowledge thereof is presumed. However, the test of
whether it would have been obvious to select specific teachings and combine them as did
the applicant must still be met by identification of some suggestion, teaching, or
motivation in the prior art, arising from what the prior art would have taught a person of
ordinary skill in the field of the invention."); In re Fine, 837 F.2d 1071, 1075, 5 USPQ2d
1596, 1598 (Fed. Cir. 1988) (there must be "some objective teaching in the prior art or
that knowledge generally available to one of ordinary skill in the art would lead that
individual to combine the relevant teachings of the references").
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