Interference No. 103,950
(We note that a declaration executed by Mr. Williamson which
was filed by Tsuruta, indicates
that he regards the provision of selectively drivable staple
deforming means as recited in claim 4 to be a significant
departure from the prior art.)
Our appellate reviewing court, in Smith Industries
Medical Systems, Inc. v. Vital Signs, Inc., 183 F.3d 1347,
1356, 51 USPQ2d 1415, 1420 (Fed. Cir. 1999), has noted that
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.
Nardella has not identified the source of the various claim
limitations in the prior art, much less a motivation, teaching
or suggestion to combine them. See also In re Kotzab, 217
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