Appeal No. 2000-2226 Page 7
Application No. 08/827,107
extended position and a second retracted position, as disclosed by Takagi. (Final
Rejection at 7-8.) He adds, “[t]he motivation for modification would have been to
sufficiently reduce the size of the main body of the portable telephone. . . .” (Id. at 8.)
The appellants argue, "making the antenna/clip (7) taught by Harrison rotatable would
obviously have no effect on the size of the ‘main body’ of the telephone." (Reply Br.
at 2.)
“[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 applicants.” 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, Harrison discloses “a radio telephone ha[ving] an antenna [7] which, rather
than extending away from the housing of the apparatus, is bent around the housing to
overlap it in a clip-like formation.” Abs., ll. 1-4. Contrary to the examiner's assertion,
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