Ex Parte VANMOOR - Page 4




                Appeal No. 2002-0011                                                                           Page 4                   
                Application No. 09/179,643                                                                                              


                fall victim to the insidious effect of a hindsight syndrome wherein that which only the                                 
                invention taught is used against its teacher."  Id. (quoting W.L. Gore & Assocs., Inc. v.                               
                Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 313 (Fed. Cir. 1983)).                                                


                        Most if not all inventions arise from a combination of old elements.  See In re                                 
                Rouffet, 149 F.3d 1350, 1357, 47 USPQ2d 1453, 1457 (Fed. Cir. 1998).  Thus, every                                       
                element of a claimed invention may often be found in the prior art.  See id.  However,                                  
                identification in the prior art of each individual part claimed is insufficient to defeat                               
                patentability of the whole claimed invention.  See id.  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 appellant.  See In re Dance, 160 F.3d 1339, 1343, 48 USPQ2d                                        
                1635, 1637 (Fed. Cir. 1998); In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127                                       
                (Fed. Cir. 1984).                                                                                                       


                        The motivation, suggestion or teaching may come explicitly from statements in                                   
                the prior art, the knowledge of one of ordinary skill in the art, or, in some cases the                                 
                nature of the problem to be solved.  See Dembiczak, 175 F.3d at 999, 50 USPQ2d at                                       
                1617.  In addition, the teaching, motivation or suggestion may be implicit from the prior                               
                art as a whole, rather than expressly stated in the references.  See WMS Gaming, Inc.                                   








Page:  Previous  1  2  3  4  5  6  7  8  9  10  Next 

Last modified: November 3, 2007