Appeal No. 2001-1957 Page 5
Application No. 08/479,849
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 “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 Inc. v.
Southern California Edison, 227 F.3d 1361, 1375, 56 USPQ2d 1065, 1075-76
(Fed. Cir. 2000).
In our opinion, the statement of the rejection on this record establishes, at
best, that individual parts of the claimed invention were known in the prior art.
There is however, nothing in the statement of the rejection, or the prior art relied
upon that would have lead a skilled artisan with no knowledge of the claimed
invention to select the elements from the cited prior art references for
combination in the manner claimed. Accordingly, we reverse the rejection of
claims 15-25 under 35 U.S.C. § 103 as being unpatentable over Benkovic or
Janda in view of Lura, Stephenson, Geiger or Kossiakoff.
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