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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