Appeal No. 1998-0853
Application No. 08/381,364
from the receiving web speed (col. 1 line 52 to col. 2 line 23; col. 2 lines 39-44;
col. 3 lines 48 to col. 4 lines 13).
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 appellants. 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).
In this instance, the APA referred to by the examiner on page 1 of the appellants'
specification discloses that the speed at which parts are fed into a process often is not the same
as the speed of the product web itself and that, in these cases, the speed at which the parts are
fed must be changed to match the speed of the product web to properly apply the parts without
adversely affecting the process or the finished product (specification, page 1). However, we
find in this disclosure nothing to suggest modifying Schroth to feed the ribbons 16, 18 (or
discrete ribbon strips 54, 56) at a speed which is different from that of the moving web of
material 22 and the examiner has not articulated any rationale as to why one of ordinary skill in
the art would have been motivated to do so.
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