Appeal 2006-2959
Application 10/066,277
fact that all the claimed elements or steps appear in the prior art is not per se
sufficient to establish that it would have been obvious to combine those
elements. United States v. Adams, supra; Smith Industries Medical systems,
Inc. v. Vital Signs, Inc., 183 F.3d 1347, 1356, 51 USPQ2d 1415, 1420 (Fed.
Cir. 1999). However, “[a]s long as some motivation or suggestion
to combine the references is provided by the prior art taken as a whole, the
law does not require that the references be combined for the reasons
contemplated by the inventor.” In re Beattie, 974 F.2d 1309, 1312, 24
USPQ2d 1040, 1042 (Fed. Cir. 1992). Motivation to combine references
under 35 U.S.C. § 103 must come from a teaching or suggestion within the
prior art, within the nature of the problem to be solved, or within the general
knowledge of a person of ordinary skill in the field of the invention, to look
to particular sources, to select particular elements, and to combine them as
combined by the inventor. Ruiz v. A.B. Chance Co., 234 F.3d 654, 665, 57
USPQ2d 1161, 1167 (Fed. Cir. 2000).
“[A]n implicit motivation to combine exists not only when a
suggestion may be gleaned from the prior art as a whole, but when the
‘improvement’ is technology-independent and the combination of
references results in a product or process that is more desirable, for
example because it is stronger, cheaper, cleaner, faster, lighter,
smaller, more durable, or more efficient . . . . In such situations, the
proper question is whether the ordinary artisan possesses knowledge
and skills rendering him capable of combining the prior art
references.” DyStar Textilfarben GmbH & Co. Deutschland KG v.
C.H. Patrick Co., 464 F.3d 1356, 1368, 80 USPQ2d 1641, 1651 (Fed.
Cir. 2006).
ANALYSIS
We find that Esrig teaches the invention as recited in representative
claim 1. We note that in Esrig the sample or DUT being examined for
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