CAFC於此案例中澄清顯而易知性拒絕理由的基本規則。
The CAFC (04-1616) in this case further clarified the ground rules for obviousness rejection.
Board
Bord 認為發明之使用目的不足以支持可專利性，其指出「所請求裝置其被意圖之使用的方式，不足以區別出“所請求裝置”與”滿足所請求裝置之限制條件的先前技術”間的差異」
First, the Board rejected the argument that the invention’s intended use supports patentability, noting that “the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus [from] a prior art apparatus satisfying the claimed structural limitations.” Id. at 5-6. Second, the Board rejected the argument that because “the purposes of the [prior art] references . . . are different from the [invention’s] purpose,” the invention is non-obvious, explaining that “[t]he law . . . does not require that references be combined for reasons contemplated by an inventor” and that “prior art need not suggest the same problem set forth by appellant.”
CAFC
要考慮顯而易知性分析的動機時，所審查之欲解決的問題並不特定於本發明所欲解決的問題，而是在創作本發明前發明人所遇到的一般性問題。
此句話的意思是，作為表面初步證據的引證案，其說明書中所提及之所欲解決的問題，即使不相同於本發明，亦為適格的表面初步證據。
In considering motivation in the obviousness analysis, the problem examined is not the specific problem solved by the invention but the general problem that confronted the inventor before the invention was made. See, e.g., Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323 (Fed. Cir. 2005) (“One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings.”); Ecolochem, Inc. v. S. Cal. Edison Co., 227 F.3d 1361, 1372 (Fed. Cir. 2000) (“Although the suggestion to combine references may flow from the nature of the problem, ‘[d]efining the problem in terms of its solution reveals improper hindsight in the selection of the prior art relevant to obviousness.’” (internal citation omitted) (quoting Monarch Knitting Mach. Corp. v. Sulzer Morat GmbH, 139 F.3d 877, 881 (Fed. Cir. 1998))); In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992) (“[T]he law does not require that the references be combined for the reasons contemplated by the inventor.”); Princeton Biochemicals, Inc. v. Beckman Coulter, Inc., 411 F.3d 1332, 1337 (Fed. Cir. 2005) (characterizing the relevant inquiry as “[would] an artisan of ordinary skill in the art at the time of the invention, confronted by the same problems as the inventor and with no knowledge of the claimed invention,[] have selected the various elements from the prior art and combined them in the manner claimed”); see also Graham, 383 U.S. at 35 (characterizing the problem as involving mechanical closures rather than in terms more specific to the patent in the context of determining the pertinent prior art). Therefore, the “motivation-suggestion-teaching” test asks not merely what the references disclose, but whether a person of ordinary skill in the art, possessed with the understandings and knowledge reflected in the prior art, and motivated by the general problem facing the inventor, would have been led to make the combination recited in the claims. See Cross Med. Prods., 424 F.3d at 1321-24. From this it may be determined whether the overall disclosures, teachings, and suggestions of the prior art, and the level of skill in the art—i.e., the understandings and knowledge of persons having ordinary skill in the art at the time of the invention—support the legal conclusion of obviousness. See Princeton Biochemicals, 411 F.3d at 1338 (pointing to evidence supplying detailed analysis of the prior art and the reasons one of ordinary skill would have possessed the knowledge and motivation to combine).
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intended use, is intended to be employed 使用目的
