Appeal No. 2001-0931 Page 9
Application No. 09/104,476
[c]ombining various combinations of reagents and structural limitations in test
strips is well known and both Phillips [I and II] teach many combinations of such
elements.”
The examiner’s reliance on what is “well known” or “conventional in this
art” suggests that the examiner’s rejection is extended to include other
references, not cited in the statement of the rejection. We remind the examiner
that the question for us to consider is not whether appellants’ claimed invention
is “well known” or “conventional” but whether the claimed invention is prima facia
obvious in view of the prior art relied upon by the examiner.
As set forth in In re Kotzab, 217 F.3d 1365, 1369-70, 55 USPQ2d 1313,
1316 (Fed. Cir. 2000):
A critical step in analyzing the patentability of claims pursuant to
section 103(a) is casting the mind back to the time of 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. Close adherence to this methodology is especially important
in cases where the very ease with which the invention can be
understood may prompt one Ato fall victim to the insidious effect of
a hindsight syndrome wherein that which only the invention taught
is used against its teacher.@
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 other words, Athere still must be evidence that >a skilled artisan, . . . with no
knowledge of the claimed invention, would select the elements from the cited
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