Ex parte KONIG et al. - Page 7




          relies on Uhrhan.  Finding that applicants are using the                    
          Uhrhan compounds for their intended use, the examiner further               
          found that there was motivation to use the Uhrhan compounds in              
          place of the hydrazide group-containing compounds of Cook or                
          Konig.                                                                      
               The mere fact that all of the elements of a claimed                    
          combination are found in the prior art is not per se                        
          sufficient to justify a § 103 rejection.  Smith Industries                  
          Medical Systems, Inc. v. Vital Signs, Inc., 183 F.3d 1347,                  
          1356, 51 USPQ2d 1415, 1420-21 (Fed. Cir. 1999) (there is no                 
          basis for concluding that an invention would have been obvious              
          solely because it is a combination of elements that were known              
          in the art at the time of the invention.  The relevant inquiry              
          is whether there is a reason, suggestion, or motivation in the              
          prior art that would lead one of ordinary skill in the art to               
          combine the teachings of the references, and that would also                
          suggest a reasonable likelihood of success.  Such a suggestion              
          or motivation may come from the references themselves, from                 
          knowledge by those skilled in the art that certain references               
          are of special interest in a field, or even from the nature of              
          the problem to be solved); In re Kotzab, 217 F.3d 1365, ____,               
          55 USPQ2d 1313, ____ (Fed. Cir. 2000) (identification in the                
          prior art of each individual part claimed is insufficient to                

                                        - 7 -                                         





Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  13  Next 

Last modified: November 3, 2007