Appeal No. 1998-0773 Page 3
Application No. 08/578,106
THE REJECTION
Claims 2-7, 9, and 10 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Hankey in view of Wu.1
OPINION
We have reviewed the respective positions presented by Appellants and the Examiner. In so
doing, we find ourselves in agreement with Appellants that the applied prior art fails to establish a
prima facie case of obviousness with respect to the subject matter of the claims. Accordingly, we
reverse the Examiner's rejection for essentially those reasons advanced by Appellants, and we add the
following primarily for emphasis.
In In re Kotzab, the Federal Circuit noted that:
A critical step in analyzing the patentability of claims pursuant to section 103(a) 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.
* * *
Most if not all inventions arise from a combination of old elements. Thus, every
element of a claimed invention may often be found in the prior art. However, identification
in the prior art of each individual part claimed is insufficient to defeat patentability of the
whole claimed invention. 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 applicant.
1A rejection under 35 U.S.C. § 112, second paragraph was withdrawn by the Examiner after
the final rejection (Answer, page 5).
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