Appeal No. 2001-0934 Page 6
Application No. 09/294,483
can be understood may prompt one “to 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, “there still must be evidence that ‘a skilled artisan, … with
no knowledge of the claimed invention, would select the elements from the cited
prior art references for combination in the manner claimed.’” Ecolochem, 227
F.3d at 1375, 56 USPQ2d at 1075-76.
At best, the statement of the rejection establishes that individual parts of
the claimed invention were known in the prior art. Prima facie obviousness
based on a combination of references, however, requires that the prior art
provide “a reason, suggestion, or motivation to lead an inventor to combine those
references.” Pro-Mold and Tool Co. v. Great Lakes Plastics Inc.,
75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996).
[E]vidence of a suggestion, teaching, or motivation to combine may
flow from the prior art references themselves, the knowledge of one
of ordinary skill in the art, or, in some cases, from the nature of the
problem to be solved. . . . The range of sources available, however,
does not diminish the requirement for actual evidence. That is, the
showing must be clear and particular.
In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999)
(citations omitted). The suggestion to combine prior art references must come
from the cited references, not from the application’s disclosure. See In re Dow
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