Appeal No. 2007-0737
Application No. 10/290,606
Teaching, suggestion, motivation
Burnham, Dewitt, and Donovan provide sufficient evidence to
establish that the concept of manually deforming a container bottom to eject
food from it was well known to the person of ordinary skill in the art (see
supra, p. 5-6). Ellis’s ice cream dipper operates on the same principle, but
uses a more sophisticated system that relies on air pressure, rather than a
person’s fingers, to deform the scoop and discharge the ice cream from it.
Because manual deformation had been used repeatedly in the prior art to
perform the same function that air or fluid pressure accomplishes in Ellis’s
dipper, we find the Examiner’s prima facie case of obviousness supported by
a preponderance of the evidence that the skilled worker would have
recognized that it could have been applied to an ice scoop, eliminating the
need for Ellis’s more complicated system. There is no express suggestion to
make the modification, but the suggestion, teaching, or motivation to
combine the relevant prior art teachings does not have to be found explicitly
in the prior art. “[T]he teaching, motivation, or suggestion may be implicit
from the prior art as a whole, rather than expressly stated in the references.
The test for an implicit showing is what the combined teachings, knowledge
of one of ordinary skill in the art, and the nature of the problem to be solved
as a whole would have suggested to those of ordinary skill in the art.” In re
Kahn, 441 F.3d 977, 987-988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006).
Appellant contends that the “the rigid exterior shell of Ellis cannot be
eliminated” because it “would render Ellis inoperative.” (Br. 4.) Appellant
asserts that the rigid shell “is absolutely necessary to fulfill the function of
deforming the flexible diaphragm . . . when using pneumatics or hydraulics.
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