Appeal 2007-1305
Application 09/725,394
1 In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369, 70 USPQ2d 1827, 1834
2 (Fed. Cir. 2004).
3
4 Obviousness
5 In order to determine whether a prima facie case of obviousness has been
6 established, we considered the three factors set forth in Graham v. John Deere Co.,
7 383 U.S. 1, 17-18, 148 USPQ 459, 466-67 (1966), viz., (1) the scope and content of
8 the prior art; (2) the differences between the prior art and the claims at issue; and
9 (3) the level of ordinary skill in the art. We also considered the requirement, as
10 recently re-stated in In re Kahn, 441 F.3d 977, 78 USPQ2d 1329 (Fed. Cir. 2006),
11 for a showing of a “teaching, suggestion, or motivation” to modify or combine the
12 prior art teaching. As to this test, the court explained,
13 The “motivation-suggestion-teaching” test asks not merely what the
14 references disclose, but whether a person of ordinary skill in the art,
15 possessed with the understandings and knowledge reflected in the
16 prior art, and motivated by the general problem facing the inventor,
17 would have been led to make the combination recited in the claims….
18 From this it may be determined whether the overall disclosures,
19 teachings, and suggestions of the prior art, and the level of skill in the
20 art – i.e., the understandings and knowledge of persons having
21 ordinary skill in the art at the time of the invention – support the legal
22 conclusion of obviousness.
23
23 Kahn, 441 F.3d at 988, 78 USPQ2d at 1337 (internal citations omitted). It is not
24
25 just the explicit teachings of the art itself, but also the understandings and
26 knowledge of persons having ordinary skill in the art, that play a role in applying
27 the motivation-suggestion-teaching test.
9
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