Ex parte REILLY - Page 5




          Appeal No. 2001-0730                                       Page 5           
          Application No. 09/221,543                                                  


          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                 
          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                 









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