Appeal No. 2002-0986 Page 7
Application No. 09/222,282
the prior art suggested the desirability of the modification. See In re Fritch, 972 F.2d
1260, 1266, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992); In re Mills, 916 F.2d 680, 682,
16 USPQ2d 1430, 1432 (Fed. Cir. 1990); In re Gordon, 733 F.2d 900, 902, 221 USPQ
1125, 1127 (Fed. Cir. 1984). As stated in In re Kotzab, 217 F.3d 1365, 1370, 55
USPQ2d 1313, 1316-17 (Fed. Cir. 2000),
[m]ost 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].
From our perspective, Kanbar’s use of a drive gear and worm gear arrangement in a
sheet dispenser for driving a dispensing roller offers no suggestion to replace the
manual or the linear to rotary actuator arrangement in Bailey’s cutting apparatus.
Moreover, even if such a modification were made, it is not apparent to us, absent
appellants’ teaching, why one skilled in the art making such a modification would
necessarily combine such a worm gear device with an overrunning coupling operably
secured to the worm shaft as called for in claim 1. Bailey’s one-way clutch 51 is
provided for use with the arm 54 and the manual or reciprocating cylinder arrangement
to prevent backward rotation of the knife upon return motion of the arm. Such
reciprocation would not appear to be an issue with the use of a rotary dc-motor and
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