Appeal No. 2000-1487 Page 4
Application No. 08/786,373
respective positions articulated by the appellant and the examiner. As a consequence of
our review, we make the determinations which follow.
Claim 1 requires means forming indicia carried by the outwardly facing skirt portion
of the step for visual observation of the means forming indicia from the side and front of the
trailer and a lamp positioned behind the means forming indicia. As acknowledged by the
examiner (answer, page 3), Koch, the primary reference relied upon in rejecting claim 1,
lacks these features. The examiner looks to the teachings of Barry to supply the missing
lamp and means forming indicia.
As stated by our reviewing court in In re Kotzab, 217 F.3d 1365, 1369-70, 55
USPQ2d 1313, 1316 (Fed. Cir. 2000):
Most if not all inventions arise from a combination of old
elements. Thus, every element of a claimed invention may
often be found in the prior art. However, identification in the
prior art of each individual part claimed is insufficient to defeat
patentability of the whole claimed invention. 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
[citations omitted].
In this instance, Barry does disclose means forming indicia (panels 24, 26 with
openings 25, 27 therein) and a lamp (illumination means 42, 48) positioned behind the
means forming indicia of the type called for in claim 1. From our perspective, however,
one skilled in the art would have found no suggestion whatsoever in Barry’s teaching of an
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