Appeal 2006-2328
Application 10/131,049
of ordinary skill solely on the cold words of the literature"); In re GPAC Inc.,
57 F.3d 1573, 1579, 35 USPQ2d 1116, 1121 (Fed. Cir. 1995) (the Board did
not err in adopting the approach that the level of skill in the art was best
determined by the references of record). However, this too is unhelpful
because what is really important is how persons skilled in the art think and
what approach to solving a problem immediately comes to mind. This is only
important in this case in the rejection of claim 26 and in the new grounds of
rejection of claims 57 and 58, which rely on a combination of references.
Principles of law
A rejection under 35 U.S.C. § 103 must address and account for all
elements and limitations of the claim.
Even when obviousness is based on a single prior art reference, there
must be a showing of a suggestion or motivation to modify the teachings of
the reference. In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1316-17
(Fed. Cir. 2000). "[T]he motivation to combine need not be found in prior art
references, but equally can be found 'in the knowledge generally available to
one of ordinary skill in the art' . . . ." Cross Med. Prods., Inc., v. Medtronic
Sofamor Danek, Inc., 424 F.3d 1293, 1322, 76 USPQ2d 1662, 1684 (Fed. Cir.
2005). However, "determinations of obviousness, as with such
determinations generally, should be based on evidence rather than on mere
speculation or conjecture." Alza Corp. v. Mylan Labs, Inc., 464 F.3d 1286,
1290, 80 USPQ2d 1001, 1004 (Fed. Cir. 2006). In making a rejection, an
examiner may "take notice of facts beyond the record which, while not
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