Motivation Need Not be Found in References Sought to be Combined but May be Found in Any Number of Sources

In re Stauffer, [2007-1445] (July 24, 2008) [WARD, Schall, Prost] NON-PRECEDENTIAL The Federal Circuit affirmed the BPAI’s decision that the claims were obvious under 35 U.S.C. § 103.
DISCUSSION: The scope and content of the prior art, the level of skill in the art at the time of the invention, the objective evidence of nonobviousness, the presence or absence of a motivation to combine, and whether a reference constitutes analogous prior art, what the prior art teaches, and whether it teaches toward or away from the claimed invention are all questions of fact. Inter alia, Applicant argued a lack of motivation to modify the prior art. The Federal Circuit noted that the motivation need not be found in references sought to be combined, but may be found in any number of sources, including common knowledge, the prior art as a whole, or the nature of the problem itself. The Federal Circuit said that there is no requirement that the prior art contain an express suggestion to combine known elements to achieve the claimed invention. Rather, the suggestion to combine may come from the prior art, as filtered through the knowledge of one skilled in the art.
The Federal Circuit found no error in the BPAI’s decision.