Appeal 2006-1708
Application 10/186,253
1 In evaluating prior art references, it is proper to take into account not only
2 the specific teachings of the references but also the inferences which one skilled in
3 the art would reasonably be expected to draw therefrom. In re Preda, 401 F.2d
4 825, 826, 159 USPQ 342, 344 (CCPA 1968).
5 The reason or motivation to modify the reference may often suggest what
6 the inventor has done, but for a different purpose or to solve a different problem. It
7 is not necessary that the prior art suggest the combination to achieve the same
8 advantage or result discovered by applicant. See In re Kahn, 441 F.3d 977, 987, 78
9 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of
10 the general problem confronting the inventor rather than the specific problem
11 solved by the invention).
12 Any need or problem known in the field of endeavor at the time of the
13 invention and addressed by the prior art can provide a reason for combining
14 elements in the manner claimed. KSR Int’l, 127 S.Ct. at 1742, 82 USPQ2d at
15 1397.
16 An appellant who is asserting unexpected results to support a contention of
17 nonobviousness bears the burden of proof of establishing the results are
18 unexpected. See In re Klosak, 455 F.2d 1077, 1080, 173 USPQ 14, 16 (CCPA
19 1972) and In re Freeman 474 F.2d 1318, 1324, 177 USPQ 139, 143 (CCPA 1973).
20 When unexpected results are used as evidence of nonobviousness, the results must
21 be shown to be unexpected as compared with the closest prior art. In re Baxter
22 Travenol Labs., 952 F.2d 388, 392, 21 USPQ2d 1281, 1285 (Fed. Cir. 1991), citing
23 In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984).
24 An appellant who is asserting commercial success to support a contention of
25 nonobviousness bears the burden of proof of establishing a nexus between the
26 claimed invention and evidence of commercial success.
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