Appeal No. 2004-1118
Application No. 09/619,873
particular findings must be made as to the reason a skilled
artisan, with no knowledge of the claimed invention, would have
selected these components for combination in the manner claimed.
Id. That is, since most if not all inventions arise from a
combination of old elements, every element of a claimed invention
may often be found in the prior art, and therefore the mere
identification in the prior art of the claimed elements is
insufficient to defeat patentability of the claimed invention as
a whole. Kotzab, 217 F.3d at 1370, 55 USPQ2d at 1316. This is
why there must be some motivation, suggestion or teaching of the
desirability of making the appellants’ specifically claimed
combination in order to establish a prima facie case of
obviousness. Id.
Here, the Okey and Allen references do not contain the
requisite motivation, suggestion or teaching of the desirability
for combining the specific components thereof as proposed by the
examiner in order to thereby achieve the appellants’ claimed
vibration dampening laminate.
For example, the examiner proposes that:
[i]t would have been obvious to one having
ordinary skill in the art at the time the invention was
made to have used the polyurethane foam of Allen . . .
in place of the polyimide foam of Okey, motivated by
the desire to obtain a vibration damping [sic,
4
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007