Appeal No. 1999-0342
Application 08/184,813
“[S]uggestion to combine may be found in explicit or implicit teachings within
the references themselves, from the ordinary knowledge of those skilled in
the art, or from the nature of the problem to be solved.” … However, there still
must be evidence that “a skilled artisan, confronted with the same problems
as the inventor and with no knowledge of the claimed invention, would select
the elements from the cited prior art references for combination in the
manner claimed.” … “[A] rejection cannot be predicated on the mere
identification … of individual components of claimed limitations.
[Citations omitted]. Further, as set forth in In re Kotzab, 217 F.3d 1365, 1369-70, 55
USPQ2d 1313, 1316 (Fed. Cir. 2000):
A critical step in analyzing the patentability of claims pursuant to section
103(a) is casting the mind back to the time of invention, to consider the
thinking of one of ordinary skill in the art, guided only by the prior art
references and the then-accepted wisdom in the field. [] Close adherence to
this methodology is especially important in cases where the very ease with
which the invention can be understood may prompt one Ato fall victim to the
insidious effect of a hindsight syndrome wherein that which only the invention
taught is used against its teacher.@ []
Most if not all inventions arise from a combination of old elements. [] Thus,
every element of a claimed invention may often be found in the prior art. []
However, identification in the prior art of each individual part claimed is
insufficient to defeat patentability of the whole claimed invention. [] Rather, to
establish obviousness based on a combination of the elements disclosed in
the prior art, there must be some motivation, suggestion or teaching of the
desirability of making the specific combination that was made by the
applicant. [citations omitted]
In other words, Athere still must be evidence that >a skilled artisan, . . . with no
knowledge of the claimed invention, would select the elements from the cited prior art
references for combination in the manner claimed.=@ Ecolochem Inc. v. Southern California
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007