Ex parte CLEMENTS - Page 6

          Appeal No. 2000-0788                                       Page 6           
          Application No. 09/017,618                                                  

          USPQ2d 1453, 1457 (Fed. Cir. 1998).  Thus, every element of a               
          claimed invention may often be found in the prior art. See id.              
          However, identification in the prior art of each individual                 
          part claimed is insufficient to defeat patentability of the                 
          whole claimed invention. See id.  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 appellant.  See In re Dance, 160 F.3d 1339, 1343, 48                 
          USPQ2d 1635, 1637 (Fed. Cir. 1998); In re Gordon, 733 F.2d                  
          900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).                             

               The motivation, suggestion or teaching may come                        
          explicitly from statements in the prior art, the knowledge of               
          one of ordinary skill in the art, or, in some cases the nature              
          of the problem to be solved.  See Dembiczak, 175 F.3d at 999,               
          50 USPQ2d at 1617.  In addition, the teaching, motivation or                
          suggestion may be implicit from the prior art as a whole,                   
          rather than                                                                 

Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  Next 

Last modified: November 3, 2007