Appeal 2006-2020
Application 10/267,152
7. The Examiner relies on Henderson simply to illustrate that the term
“bezel” is used in the field of medical diagnostic ultrasound imaging
systems to denote the portion of the display housing that borders the
display screen (col. 6, l. 16; Fig. 11).
PRINCIPLES OF LAW
To establish obviousness based on a combination of elements
disclosed in the prior art, there must be some motivation, suggestion or
teaching of the desirability of making the specific combination that was
made by Appellants. The motivation, suggestion or teaching may come
explicitly from statements in the prior art, the knowledge of one of ordinary
skill in the art, or, in some cases, the nature of the problem to be solved. In
addition, the 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. See In re
Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1316-17 (Fed. Cir. 2000).
When the improvement is technology-independent and the
combination of references results in a product or process that is more
desirable, an implicit motivation to combine exists 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
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