Appeal No. 1999-0478 Page 9
Application No. 08/534,106
to defeat patentability of the whole claimed invention. In re
Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1316 (Fed. Cir.
2000) (citing In re Rouffet, 149 F.3d 1350, 1357, 47 USPQ2d
1453, 1457 (Fed. Cir. 1998)). “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.” Id., 55 USPQ2d
at 1316 (citing In re Dance, 160 F.3d 1339, 1343, 48 USPQ2d
1635, 1637 (Fed. Cir. 1998) and In re Gordon, 733 F.2d 900,
902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). “[E]vidence of a
suggestion, teaching, or motivation to combine may flow from
the prior art references themselves, the knowledge of one of
ordinary skill in the art, or, in some cases, from the nature
of the problem to be solved ....” In re Dembiczak, 175 F.3d
994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999)(citing
Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d
1568, 1573, 37 USPQ2d 1626, 1630 (Fed. Cir. 1996) and
Para-Ordinance Mfg. v. SGS Imports Intern., Inc. , 73 F.3d
1085, 1088, 37 USPQ2d 1237, 1240 (Fed. Cir. 1995)). “The
range of sources available, however, does not diminish the
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