Appeal No. 1999-2148 Page 4
Application No. 08/864,947
Most if not all inventions arise from a combination of
old elements. See In re Rouffet, 149 F.3d 1350, 1357, 47
USPQ2d 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).
The motivation, suggestion or teaching may come
explicitly from statements in the prior art, the knowledge of
one of ordinary skill in the art, or, in some cases the nature
of the problem to be solved. See In re Dembiczak, 175 F.3d
994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999). In addition,
the teaching, motivation or suggestion may be implicit from
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