Appeal No. 2002-1200 Page 6
Application No. 09/351,164
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 this instance, neither Schölzke nor Zweber provides any teaching or
suggestion that a pressure-sensitive adhesive would be desirable or even suitable for
use in Schölzke’s apparatus and method for bonding the packaging web 3 to the roll 2.
As noted above, Schölzke expresses no concern for providing a detachable bond of the
web to the roll to keep the outer surface of the roll intact and undamaged and free of
adhesive residue. Rather, Schölzke is concerned with providing an adhesive which
acts sufficiently quickly to provide the required timely hold of the web to the roll to resist
the tension of the winding process. Neither Zweber nor Schölzke gives any indication
that a pressure-sensitive adhesive as taught by Zweber would provide the necessary
quick curing action or provide any advantages over the adhesive disclosed by Schölzke
when used in the Schölzke apparatus and method. From our perspective, the only
suggestion for putting the selected pieces from the references together in the manner
proposed by the examiner is found in the luxury of hindsight accorded one who first
viewed the appellant’s disclosure. This, of course, is not a proper basis for a rejection.
See In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992).
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007