Appeal No. 2001-1284 Page 12
Application No. 08/792,765
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 USPQ2d
1635, 1637 (Fed. Cir. 1998); In re Gordon, 733 F.2d 900, 902, 221
USPQ 1125, 1127 (Fed. Cir. 1984). In this case, we fail to find
sufficient motivation in the applied prior art for a person of
ordinary skill in the art at the time the invention was made to
have modified Cooper's apparatus (i.e., lower cup 12 and upper
shell 22) to be made of an insulating foam material having
sufficient strength so as to permit Cooper's device to still
function (i.e., to collapse the container 36). It follows that
we cannot sustain the examiner's rejections of claims 1 to 3, 5
to 23, 28 and 29 under 35 U.S.C. § 103.
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