Appeal 2006-3387
Application 09/385,489
To establish a prima facie case of obviousness, the references being
combined do not need to explicitly suggest combining their teachings. See e.g.,
Kahn, 441 F.3d at 987-88, 78 USPQ2d at 1337-38 (“the teaching, motivation, or
suggestion may be implicit from the prior art as a whole, rather than expressly
stated in the references”); and In re Nilssen, 851 F.2d 1401, 1403, 7 USPQ2d 1500,
1502 (Fed. Cir. 1988) (“for the purpose of combining references, those references
need not explicitly suggest combining teachings.”).
An explicit teaching that identifies and selects elements
from different sources and states that they should be
combined in the same way as in the invention at issue, is
rarely found in the prior art. As precedent illustrates,
many factors are relevant to the motivation-to-combine
aspect of the obviousness inquiry, such as the field of the
specific invention, the subject matter of the references,
the extent to which they are in the same or related fields
of technology, the nature of the advance made by the
applicant, and the maturity and congestion of the field.
. . . .
Precedent has also recognized that “[t]he suggestion or
motivation to combine references does not have to be
stated expressly; rather it may be shown by reference to
the prior art itself, to the nature of the problem solved by
the claimed invention, or to the knowledge of one of
ordinary skill in the art.”
In re Johnston, 435 F.3d 1381, 1385, 77 USPQ2d 1788, 1790-91 (Fed. Cir. 2006)
(citing Medical Instrumentation and Diagnostics Corp. v. Elekta AB, 344 F.3d
1205, 1221-22 (Fed. Cir. 2003)). “The test for an implicit showing is what the
combined teachings, knowledge of one of ordinary skill in the art, and the nature of
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