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Motivation for the Federal Circuit Test - page 31 / 35





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the elements of the invention except for its size. The Classic Line Thin card

holder provided this missing element, being only slightly larger than a stored card. Pro– Mold, however, argues that the district court erred in concluding that the Classic Line card holders were prior art to the patent. See 35 U.S.C. § 102 (1988). The district court considered relevant publications advertising the Classic Line Thin card holder and corroborating deposition testimony. Because the Classic Line Thin card holder was advertised in 1988, 1989, and

1990, we conclude that the district court did not err in determining that there is

no genuine dispute as to whether the prior art included the Classic Line Thin card holder.

Pro– Mold also argues that there was no reason to combine the Squeeze Tite and Classic Line Thin prior art products. We disagree. It is well– established that before a conclusion of obviousness may be made based on a combination of references, there must have been a reason, suggestion, or motivation to lead an inventor to combine those references. We start from the self– evident proposition that mankind, in particular, inventors, strive to improve that which already exists. § 103 sets the dividing line between patentability and unpatentability at what would have been obvious to one having ordinary skill in the art to which the invention pertains. If one prior art reference describes the claimed invention, it is worse than obvious in terms of patentability; it lacks novelty. If the invention is different from what is disclosed in one reference, but the differences are such that combination with another reference would lead to what is claimed, the obviousness question then requires inquiry into whether there is reason, suggestion, or motivation to make that combination.

Such a suggestion may come expressly from the references themselves. It may come from knowledge of those skilled in the art that certain references, or disclosures in the references, are known to be of special interest or importance in the particular field. It may also come from the nature of a problem to be solved, leading inventors to look to references relating to possible solutions to that problem.

In this case, the reason to combine arose from the very nature of the subject matter involved, the size of the card intended to be enclosed. There was surely a reason to combine a reference describing an elegant card holder and cover arrangement with a reference describing a card holder no larger than necessary to enclose the card. The suggestion or motivation to combine these features of the prior art was thus evident from the very size of the card itself. Card holders larger than the card had already been designed, as evidenced at least by the Squeeze Tite card holder. On the other hand, a card holder no larger than necessary clearly was desirable in order to enable the card holders to fit in a set box. It would also avoid having the cards bang around in a holder larger than needed. Accordingly, the size of the card provided the motivation to combine the features of the prior art card holders and hence modify the size of the Squeeze Tite card holder so that it was not larger or smaller than the card, but rather substantially the size of the card.


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