Appeal No. 1999-1652 Page 7
Application No. 08/758,369
for recirculating ink from the ink passage to the ink keeper
is neither taught, suggested, nor necessary.
For its part, Barbero teaches an ink printing head that
includes an ink reservoir and an ink container. “The
reservoir 51 is connected to the container 34 by a hydraulic
circuit comprising a feed tube 52, a discharge tube 53 ....”
Col. 5, ll. 3-5. Furthermore, the discharge tube is
necessarily connected to an ink discharge port in the
container.
The examiner fails to identify a sufficient suggestion to
combine the teachings of the references. “[I]dentification in
the prior art of each individual part claimed is insufficient
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
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