Appeal 2006-3387
Application 09/385,489
invention by applicant. Newell Companies v. Kenney Mfg. Co., 864 F.2d 757, 768,
9 USPQ2d 1417, 1426 (Fed. Cir. 1988) (“[O]nce another supplied the key element,
there was no long-felt need or, indeed, a problem to be solved.”) Third, the
invention must in fact satisfy the long-felt need. In re Cavanagh, 436 F.2d 491,
168 USPQ 466 (CCPA 1971).
In addition to our review of the Graham factors, we also considered the
requirement of a showing of a “teaching, suggestion, or motivation” to modify or
combine the prior art teachings. This requirement was recently described in In re
Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1337 (Fed. Cir. 2006),
[T]he “motivation-suggestion-teaching” test asks not
merely what the references disclose, but whether a person
of ordinary skill in the art, possessed with the
understandings and knowledge reflected in the prior art,
and motivated by the general problem facing the
inventor, would have been led to make the combination
recited in the claims. From this it may be determined
whether the overall disclosures, teachings, and
suggestions of the prior art, and the level of skill in the
art – i.e., the understandings and knowledge of persons
having ordinary skill in the art at the time of the
invention-support the legal conclusion of obviousness.
(internal citations omitted).
“In considering motivation in the obviousness analysis, the problem
examined is not the specific problem solved by the invention but the general
problem that confronted the inventor before the invention was made. Kahn, 441
F.3d at 988, 78 USPQ2d at 1336 (citations omitted).
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