Appeal No. 96-0141
Application No. 08/084,097
invention which combines numerous elements, "the question is
whether there is something in the prior art as a whole to
suggest the desirability, and thus the obviousness, of making
the combination. [Citations omitted]." In re Rouffet, 149
F.3d at 1356, 47 USPQ2d at 1456. We do not find, on this
record, that the examiner has shown that the prior art, as a
whole, would have suggested the desirability of making the
combination claimed by appellant. The examiner has not shown
on this record why one of ordinary skill in the pointer art
would have combined the molding process for making a unitary
seal disclosed by Linne with the conventional methods of
making pointers taught by Pasco and the admitted prior art
while adding the reinforced sandwiched structure of a display
cabinet of Hirota.
It is noted that evidence of a suggestion, teaching or
motivation to combine may come from the prior art references
themselves, the knowledge of one of ordinary skill in the art,
or from the nature of the problem to be solved. See Pro-Mold
& Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573,
37 USPQ2d 1626, 1630 (Fed. Cir. 1996). In our view, the
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