Appeal No. 2001-0941 Page 9
Application No. 08/890,705
1260, 1266, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992) (“The mere fact that the
prior art may be modified in the manner suggested by the Examiner does not
make the modification obvious unless the prior art suggested the desirability of
the modification.”). See also 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.”
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