Appeal No. 2002-0439
Application No. 09/391,384
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, Athere 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).
“It is impermissible within the framework of section 103 to pick and choose from
any one reference only so much of it as will support a given position to the exclusion of
other parts necessary to the full appreciation of what such reference fairly suggests to
one skilled in the art.” In re Wesslau, 353 F.2d 238, 241, 147 USPQ 391, 393 (CCPA
1965); see also In re Mercer, 515 F.2d 1161, 1165-66, 185 USPQ 774, 778 (CCPA
1975).
In the present case, the examiner has failed to indicate and provide sufficient
evidence of the specific understanding or principle within the knowledge of a skilled
artisan, explicit or implicit, that would have motivated one with no knowledge of
appellants’ invention to make the combination in the manner claimed. In re Rouffet,
149 F.3d 1350, 1357, 47 USPQ2d 1453, 1457 (Fed. Cir. 1998). In re Kotzab, 217 F.3d
1365, 1369-70, 55 USPQ2d 1313, 1316 (Fed. Cir. 2000). What is missing from the
examiner’s analysis is why one of ordinary skill in the art would have been motivated to
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