Appeal No. 95-2456
Application 08/059,895
We conclude that the examiner has not established a
prima facie case of obviousness for the reasons stated in
appellants= Reply Brief. We agree with the Reply Brief
that the only way to arrive at the claimed method is to
impermissibly use appellants= specification as a
blueprint.
As this court has stated, >virtually all
[inventions] are combinations of old elements.=
Environmental Designs, Ltd. v. Union Oil Co., 713
F.2d 693, 698, 218 USPQ 865, 870 (Fed. Cir. 1983),
cert denied, 464 U.S. 1043 (1984); see also
Richdel, Inc. v. Sunspool Corp., 714 F.2d 1573,
1579-80, 219 USPQ 8, 12 (Fed. Cir. 1983) (>Most, if
not all, inventions are
combinations and mostly of old elements.=).
Therefore an examiner may often find every element
of a claimed invention in the prior art. If
identification of each claimed element in the
prior art were sufficient to negate patentability,
very few patents would ever issue. Furthermore,
rejecting patents solely by finding prior art
corollaries for the claimed elements would permit
an examiner to use the claimed invention itself as
a blueprint for piecing together elements in the
prior art to defeat the patentability of the
claimed invention. Such an approach would be >an
illogical and inappropriate process by which to
determine patentability.= Sensonics, Inc. v.
Aerosonic Corp., 81 F.3d 1566, 1570, 38 USPQ2d
1551, 1554 (Fed. Cir. 1996).
To prevent the use of hindsight based on the
invention to defeat patentability of the
invention, this court requires the examiner to show
a motivation to combine the references that create
the case of obviousness. In other words, the
examiner must show reasons that the skilled
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