dystar, dembiczak - [E]vidence of a motivation to combine need not be found in the prior art references themselves, but rather may be found in "the knowledge of one of ordinary skill in the art or, in some cases, from the nature of the problem to be solved." ... When not from the prior art references, the "evidence" of motive will likely consist of an explanation of the well-known principle or problem-solving strategy to be applied.
kao - unexpected results must be commensurate with the scope of the claim. kollman - One data point is insufficient to “to ascertain a trend in the exemplified data which would allow [one having ordinary skill in the art] to reasonably extend the probative value thereof.” cree - impermissible hindsight not the same as insufficient evidence of a motivation to combine the references
par pharmaceutical - The concept of inherency must be limited when applied to obviousness, and is present only when the limitation at issue is the 'natural result' of the combination of prior art elements.
IPXL - A claim that recites both a system (or apparatus) and a method of using that system (or apparatus) does not apprise one of ordinary skill in the art of its scope, and thus, is invalid under 35 U.S.C. 112, second paragraph. katz interactive, ultimatepointer - one of ordinary skill in the art could reasonably consider the "placed in an initial operating state" limitation as "directed to user actions, not system capabilities."
nat'l recovery - The scope of enablement, in turn, is that which is disclosed in the specification plus the scope of what would be known to one of ordinary skill in the art without undue experimentation
panduit - courts should avoid a “superficial review” of prior art references and instead should “consider references in their entireties, i.e., including those portions that would argue against obviousness.”
SIBIA, ormco - A claim can be obvious even where all of the claimed features are not found in specific prior art references, where “there is a showing of a suggestion or motivation to modify the teachings of [the prior art] to the claimed invention.” kotzab - even when obviousness is based on a single prior art reference, there must be a showing of a suggestion or motivation to modify the teachings of that reference. fritch - The mere fact that the prior art may be modified in the manner…
chilowsky2 - If the alleged operation seems clearly to conflict with a recognized scientific principle as, for example, where an applicant purports to have discovered a machine producing perpetual motion, the presumption of inoperativeness is so strong that very clear evidence is required to overcome it.
eli - for anticipation, the dispositive question is “whether one skilled in the art would reasonably understand or infer from a prior art reference that every claim element is disclosed in that reference.
cortright - “Prior art references may be ‘indicative of what all those skilled in the art generally believe a certain term means . . . [and] can often help to demonstrate how a disputed term is used by those skilled in the art.’” wiggins - The Examiner’s rejection is pursuant to 35 U.S.C. § 102(b), and evidence of secondary considerations, such as unexpected results, is not relevant to a rejection under § 102(b).