Appeal No. 2001-2046
Application No. 08/665,046
or making accessible by means of spraying aerial application, surface distribution,
manual and mechanical placement and other methods of exposure of dispensers to
pests.@ Column 5, lines 34-37. While also describing conventional insect pheromones
and attractants and their dosages per lb/acre (columns 20-22), we do not find that Von
Kohorn describes placing pheromone dispensers Aover the peripheral region of a field,@
as claimed.
The examiner relies on statements in the prior art as to optimization of dosages
and routine and obvious placements of pheromone sources to arrive at the claimed
daily release rates and pheromone placements. However, it is improper to rely on the
Acommon knowledge and common sense@ of the person of ordinary skill in art to find an
invention obvious over a combination of prior art references, since the factual question
of motivation to select and combine references is material to patentability, and cannot
be resolved on subjective belief and unknown authority. In re Lee, 277 F3d 1338,
1342, 61 USPQ2d 1430, 1435 (Fed. Cir. 2002).
As set forth in 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. [citations omitted]
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