1 In this case, it is appropriate to consider what one skilled in the art
2 would have known about compounds which can be used as detackifiers. In
3 using the known detackifier CAB-O-SILŪ fumed silica in place of the also
4 known paraffin oil or polyethylene or polypropylene detackifiers described
5 by Hastings, applicant has done nothing more than use a known detackifier
6 for its known purpose to achieve an expected result. Cf. Anderson's-Black
7 Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 90 S. Ct. 305, 163 USPQ
8 673 (1969) (use of a radiant-heat burner for its known use in combination
9 with a spreader and tamper/screed held to be obvious).
10 Based on arguments in the Reply Brief, applicant in response to our
11 rationale no doubt would contend that there is no specific teaching, and
12 therefore no "motivation," to use CAB-O-SILŪ fumed silica on lures in
13 place of the detackifiers explicitly described by Hastings. Graham v. John
14 Deere Co., 383 U.S. 1, 86 S. Ct. 684, 148 USPQ 459 (1966), and other pre-
15 and post-1952 Supreme Court precedent, however, does not require an
16 explicit teaching of "motivation." Nor does binding precedent of our
17 immediate reviewing court.
18 Does there have to be a suggestion in the prior art to do what an
19 applicant claims? Yes. In re Fridolph, 134 F.2d 414, 416, 57 USPQ 122,
20 124 (CCPA 1943) ("does … [the prior] art suggest doing the thing which the
21 appellant has done?"); In re Goepfrich, 136 F.2d 918, 920, 58 USPQ 324,
22 326 (CCPA 1943) ("the question is, could one skilled in the art with the
23 references before him make the combination of elements here claimed
24 without exercise of the inventive faculty ….").
25 Does the suggestion have to be explicit? No. In re Rosselet, 347 F.2d
26 847, 851, 146 USPQ 183, 186 (CCPA 1965) ("it is our view that the test of
27 obviousness is not express suggestion of the claimed invention in any or all
16
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