Appeal No. 1999-1206 Page 10
Application No. 08/394,608
has not directly addressed the limitations of even this claim.
As explained 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]
In other words, A[o]ne cannot use hindsight reconstruction to pick and choose
among isolated disclosures in the prior art to deprecate the claimed invention.@ In re
Fine, 837 F.2d 1071, 1075, 5 USPQ2d 1596, 1600 (Fed. Cir. 1988). A[T]here 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 view, that evidence is lacking in the
examiner=s rejection and in the art cited.
The initial burden of presenting a prima facie case of obviousness rests on the
examiner. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). Thus, the examiner is charged with addressing every limitation of a claimed
invention. In our judgment, the examiner has failed to establish a prima facie case of
obviousness within the meaning of 35 U.S.C. ' 103. On this record, we are constrained
to reverse the examiner=s rejection of claims 18, 20 through 25 and 27 through 37.
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