CAFC Reiterates Motivation Requirement for Combination of References

In a decision that Professor Wegner calls "an otherwise unremarkable affirmance of a pro se inventor's obviousness appeal," the court in In re Scott E. Johnston (Fed. Cir., January 30, 2006) "reiterates its 'motivation' test to establish obviousness of a combination invention:"

Precedent requires that to find a combination obvious there must be some teaching, suggestion, or motivation in the prior art to select the teachings of separate references and combine them to produce the claimed combination. Karsten
Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1385 (Fed. Cir. 2001) ("In
holding an invention obvious in view of a combination of references, there must
be some suggestion, motivation, or teaching in the prior art that would have led
a person of ordinary skill in the art to select the references and combine them
in the way that would produce the claimed invention."); In re Dance, 160 F.3d
1339, 1343 (Fed. Cir. 1998) ("When the references are in the same field as that
of the applicant's invention, knowledge thereof is presumed. However, the test
of whether it would have been obvious to select specific teachings and combine
them as did the applicant must still be met by identification of some
suggestion, teaching, or motivation in the prior art, arising from what the
prior art would have taught a person of ordinary skill in the field of the
invention."); In re Fine, 837 F.2d 1071, 1075 (Fed. Cir. 1988) (there must
be "some objective teaching in the prior art or that knowledge generally
available to one of ordinary skill in the art would lead that individual to
combine the relevant teachings of the references"); Interconnect Planning
Corp. v. Feil, 774 F.2d 1132, 1143 (Fed. Cri. 1985) ("When prior art
references require selective combination by the court to render obvious a
subsequent invention, there must be some reason for the combination other
than the hindsight gleaned from the invention itself.") 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. Objective indicia are also relevant, see Graham v. John Deere Co., 383 U.S. 1 (1966), for the commercial response to an invention is a useful control upon hindsight evaluation of obviousness.

These considerations have been extensively illustrated. E.g., Vulcan Engineering Co., Inc. v. Fata Aluminium, Inc., 278 F.3d 1366, 1372 (Fed. Cir. 2002) (continuous lost foam casting); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1385 (Fed. Cir. 2001) (golf club). 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." Medical Instrumentation and Diagnostics Corp v. Elekta AB, 344 F.3d 1205, 1221-22 (Fed. Cir. 2003). These criteria have served to impart objectivity to the
determination of obviousness. See In re Rouffet, 149 F.3d 1350, 1358 (Fed.
Cir. 1998) (obviousness requires proof "that the skilled artisan . . . would
select the elements from the cited prior art references for combination in
the manner claimed").