Appeal No. 2001-1675 Page 5
Application No. 08/442,077
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 the record before us, we find no reasonable suggestion for
combining the teachings of the references relied upon by the examiner in a
manner which would have led one of ordinary skill in this art to arrive at the
claimed invention. Therefore, it is our opinion that the examiner has failed to
meet his burden1 of providing the evidence necessary to support a prima facie
case of obviousness.
1 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).
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