Appeal No. 2001-0380 Page 5
Application No. 08/676,971
Furthermore, as set forth in In re Kotzab, 217 F.3d 1365, 1369-70, 55
USPQ2d 1313, 1316 (Fed. Cir. 2000):
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].
On this record, we agree with appellants that the examiner failed to identify
where the prior art of record provides the requisite suggestion to make the
specific combination leading to appellants’ claimed invention. In our opinion, the
statement of the rejection, at best, establishes that individual parts of the claimed
invention were known in the prior art. The statement of the rejection, however,
fails to establish that a person of ordinary skill in the art would have a reasonable
expectation of success in combining the elements disclosed in the prior art in the
manner necessary to arrive at appellants’ claimed invention. Therefore, it is our
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007