Appeal No. 1997-3338
Application No. 08/402,252
contact. [Emphasis added; examiner’s answer, pp. 6,
9,
11, and 12.]
We cannot agree.
Under 35 U.S.C. § 103, the examiner carries the initial
burden of establishing a prima facie case of obviousness.
In re Piasecki, 745 F.2d 1468, 1471-72, 223 USPQ 785, 787-88
(Fed. Cir. 1984). As part of meeting this initial burden, the
examiner must determine whether the differences between the
subject matter of the claims and the prior art “are such that
the subject matter as a whole would have been obvious at the
time the invention was made to a person having ordinary skill
in the art” (emphasis added). 35 U.S.C. § 103(a)(1999);
Graham v. John Deere Co., 383 U.S. 1, 14, 148 USPQ 459, 465
(1966).
In the recent decision of In re Kotzab, 217 F.3d 1365,
1369-70, 55 USPQ2d 1313, 1316 (Fed. Cir. 2000), our reviewing
court stated:
Most if not all inventions arise from a
combination of old elements. See In re Rouffet, 149
F.3d 1350, 1357, 47 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
6
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