Appeal No. 2000-1279
Application No. 09/053,025
the claimed invention. See In re Lalu, 747 F.2d 703, 705, 223
USPQ 1257, 1258 (Fed. Cir. 1984).
A critical step in analyzing the patentability of claims
pursuant to 35 U.S.C. § 103(a) is casting the mind back to the
time of an 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. See In
re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed.
Cir. 1999).
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). 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 an 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). Even when
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