Ex parte Gottling (B.P.A.I. 2005) (unpublished).
Gottling successfully appealed an Examiner’s rejection based on his argument that there was no motivation for combining the cited prior art references within the references themselves.
Obviousness cannot be established by combining prior art to produce the claimed invention absent some teaching or suggestion supporting the combination. The mere fact that the prior art may be modified in the manner suggested by an examiner does not make the modification obvious unless the prior art suggested the desirability of the modification.
In this case, the Board found that the Examiner had not explained “why a person of ordinary skill in the art would have found it obvious” to combine the references in the manner proposed by the Examiner.” In particular, the Board noted that neither reference specifically recognized the advantages discussed in Gottling’s application.
KSR v. Teleflex, now before the Supreme Court asks the court to review the “teaching-suggestion-motivation test” that was the basis of the Gottling decision.