Appeal No. 2001-1173 Page 8
Application No. 08/614,593
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]
In other words, “there 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). On this record, the examiner appears to have found individual
parts of the claimed invention. The examiner, however, has failed to identify any
suggestion in the prior art that would lead a person of ordinary skill in the art to
combine these different prior art references in a manner that would lead to
appellants’ claimed invention.
Accordingly we reverse the rejection of claims 1-14 and 20-32 under
35 U.S.C. § 103 as being unpatentable over Miyake or Gjaltema in view of
Darouiche and Woodson.
REVERSED
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