Appeal No. 1999-2039 Page 8
Application No. 08/531,424
The examiner fails to identify a persuasive 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
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); In re Gordon, 733 F.2d 900, 902,
221 USPQ 1125, 1127 (Fed. Cir. 1984).
Here, although Pileski discloses “optical fibers 27 which
are fanned out and arranged in an arc disposed in the annular
space between the lens retainer 20 and the cylindrical wall 28
of the insertion tube,” col. 4, ll. 4-7, the examiner fails to
show some motivation, suggestion, or teaching of the
desirability of disposing Kakinuma’s “light emitting chips
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