Appeal 2006-3387
Application 09/385,489
trade promotion, would have been led to add the escrow service feature of Schultz
to the independent audit system of Jones as a way to enhance its service offerings
to its customers. Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H.
Patrick Co., 464 F.3d 1356, 1368, 80 USPQ2d 1641, 1651 (Fed. Cir. 2006) (“an
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 …. Because the desire to enhance commercial opportunities by
improving a product or process is universal-and even common-sensical-we have
held that there exists in these situations a motivation to combine prior art
references even absent any hint of suggestion in the references themselves.”) In
this case, the ordinary artisan possessed the requisite knowledge and skills
rendering him capable of adding the escrow service functionality of Schultz to the
audit system of Jones to make Jones’s system more commercially desirable.
We recognize that evidence of secondary considerations, such as that
presented by Appellants in this application must be considered in route to a
determination of obviousness/nonobviousness under 35 U.S.C. § 103. Accordingly,
we consider anew the issue of obviousness under 35 U.S.C. § 103, carefully
evaluating and weighing both the evidence relied upon by the Examiner and the
objective evidence of nonobviousness provided by Appellants.
Appellants presented a Declaration of Richard J. Windish (“Windish
Declaration”) as purported evidence of long-felt need. We find this evidence
insufficient, because the Windish Declaration fails to take into account that the
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