Appeal Number: 2006-1773
Application Number: 10/051,000
“teaching, suggestion, or motivation” to modify or combine the prior art teaching.
As to this test, the court explained,
The ‘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.
441 F.3d at 988, 78 USPQ2d at 1337 (internal citations omitted). It is not just the
explicit teachings of the art itself, but also the understandings and knowledge of
persons having ordinary skill in the art, that play a role in applying the motivation-
suggestion-teaching test.
The Federal Circuit has repeatedly recognized that to establish a prima facie
case of obviousness, the references being combined do not need to explicitly
suggest combining their teachings. See e.g.,, In re Kahn, 441 F.3d at 987-88, 78
USPQ2d at 1336 (“the teaching, motivation, or suggestion may be implicit from
the prior art as a whole, rather than expressly stated in the references”); and In re
Nilssen, 851 F.2d 1401, 1403, 7 USPQ2d 1500, 1502 (Fed. Cir. 1988) (“for the
purpose of combining references, those references need not explicitly suggest
combining teachings”). The court recently noted,
An explicit teaching that identifies and selects elements from different
sources and states that they should be combined in the same way as in
the invention at issue, is rarely found in the prior art. As precedent
illustrates, many factors are relevant to the motivation-to-combine
aspect of the obviousness inquiry, such as the field of the specific
invention, the subject matter of the references, the extent to which
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