relies on Uhrhan. Finding that applicants are using the Uhrhan compounds for their intended use, the examiner further found that there was motivation to use the Uhrhan compounds in place of the hydrazide group-containing compounds of Cook or Konig. The mere fact that all of the elements of a claimed combination are found in the prior art is not per se sufficient to justify a § 103 rejection. Smith Industries Medical Systems, Inc. v. Vital Signs, Inc., 183 F.3d 1347, 1356, 51 USPQ2d 1415, 1420-21 (Fed. Cir. 1999) (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); In re Kotzab, 217 F.3d 1365, ____, 55 USPQ2d 1313, ____ (Fed. Cir. 2000) (identification in the prior art of each individual part claimed is insufficient to - 7 -Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 NextLast modified: November 3, 2007