Appeal 2006-3377
Application 09/929,075
motivation may be derived from the prior art reference itself.” Id. at 1356,
55 USPQ2d at 1931 (internal citations omitted).
“Determining whether there is a suggestion or motivation to modify a
prior art reference is one aspect of determining the scope and content of the
prior art, a fact question subsidiary to the ultimate conclusion of
obviousness.” Id. “‘The presence or absence of a motivation to combine
references in an obviousness determination is a pure question of fact.’ In re
Gartside, 203 F.3d 1305, 1316, 53 USPQ2d 1769, 1776 (Fed. Cir. 2000)
. . . , as is the presence or absence of a ‘reasonable expectation of success’
from making such a combination . . . .” Alza Corp. v. Mylan Labs, 464 F.3d
1286, 1289, 80 USPQ2d 1001, 1003 (Fed. Cir. 2006).
“All of the disclosures in a reference must be evaluated for what they
fairly teach one of ordinary skill in the art.” In re Boe, 355 F.2d 961, 965,
148 USPQ 507, 510 (CCPA 1966). In making a § 103 determination, “the
fact that a specific [embodiment] is taught . . . is not controlling, since all
disclosures of the prior art . . . must be considered.” In re Lamberti, 545
F.2d 747, 750, 192 USPQ 278, 280 (CCPA 1976), quoted with approval in
Merck & Co. v. Biocraft Labs, 874 F.2d 804, 807, 10 USPQ2d 1843, 1846
(Fed. Cir. 1989).
“Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it takes into
account only knowledge which was within the level of ordinary skill at the
time the claimed invention was made and does not include knowledge
gleaned only from applicant's disclosure, such a reconstruction is proper.”
In re McLaughlin, 443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA 1971).
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