Appeal 2007-0719
Application 09/731,205
of record, but must also explain the reasoning by which the findings are
deemed to support the Examiner’s conclusion.
2B. OBVIOUSNESS (Motivation)
On appeal, Appellant bears the burden of showing that the Examiner
has not established a legally sufficient basis for combining the teachings of
the references that the Examiner relied upon. Appellant may sustain this
burden by showing that the Examiner failed to provide sufficient evidence to
support that one having ordinary skill in the art would have combined
disclosures of the references, as proposed by the Examiner, to yield
Appellant’s invention. In re Kahn, 441 F.3d at 987-88, 78 USPQ2d at 1336-
37; DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick, Co.,
464 F.3d 1356, 1360-1361, 80 USPQ2d 1641, 1645 (Fed. Cir. 2006). The
mere fact that all the claimed elements or steps appear in the prior art is not
per se sufficient to establish that it would have been obvious to combine
those elements. United States v. Adams, 383 U.S. 39, 50-52, 148 USPQ 479
(1966); Smith Industries Medical Systems, Inc. v. Vital Signs, Inc., 183 F.3d
1347, 1356, 51 USPQ2d 1415, 1420 (Fed. Cir. 1999). However, “[a]s long
as some motivation or suggestion to combine the references is provided by
the prior art taken as a whole, the law does not require that the references be
combined for the reasons contemplated by the inventor.” In re Beattie, 974
F.2d 1309, 1312, 24 USPQ2d 1040, 1042 (Fed. Cir. 1992). Motivation to
combine references under 35 U.S.C. § 103 must come from a teaching or
suggestion within the prior art, within the nature of the problem to be solved,
or within the general knowledge of a person of ordinary skill in the field of
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: September 9, 2013