Appeal No. 1998-0089
Application No. 08/303,115
We assume that the examiner's reliance on Japikse is based on
the fact that it is cited under the heading "C. Rearrangement
of Parts" in Manual of Patent Examining Procedure (M.P.E.P.)
§ 2144.05 at page 2100-106 (7th ed. July 1998, rev. 1,
Feb. 2000). However, this M.P.E.P. section further explains
that "[t]he mere fact that a worker in the art could
arrange the parts of the reference device to
meet the terms of the claims on appeal is not by
itself sufficient to support a finding of
obviousness. The prior art must provide a
motivation or reason for the worker in the art,
without the benefit of appellant's
specification, to make the necessary changes in
the reference device." Ex parte Chicago Rawhide
Mfg. Co., 223 USPQ 351, 353 (Bd. Pat. App. &
Inter. 1984).
This is in accord with numerous Federal Circuit decisions,
including In re Kotzab, 217 F.3d 1365, 1369-70, 55 USPQ2d
1313, 1316 (Fed. Cir. 2000), which states:
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
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 applicant. See In
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