Appeal No. 1998-3317 Page 4
Application No. 08/575,347
A critical step in analyzing the patentability of claims
pursuant to 35 U.S.C. § 103 is casting the mind back to the
time of invention, to consider the thinking of one of ordinary
skill in the art, guided only by the prior art references and
the then-accepted wisdom in the field. See In re Dembiczak,
175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999).
Close adherence to this methodology is especially important in
cases where the very ease with which the invention can be
understood may prompt one "to fall victim to the insidious
effect of a hindsight syndrome wherein that which only the
invention taught is used against
its teacher." Id. (quoting W.L. Gore & Assocs., Inc. v.
Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 313 (Fed.
Cir. 1983)).
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
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007