Appeal No. 2002-1996 Page 7
Application No. 09/086,312
on the teachings of both Arai's third embodiment and those of JP-U-64-44912 evidence
that neither of these inventions, by itself, discloses all the claimed elements in exactly
the same situation and united in the same way. Such a failure "negates anticipation."
Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565, 1571, 230 USPQ 81, 84 (Fed.
Cir. 1986). Therefore, we reverse the anticipation rejection.
We turn to the obviousness rejection. "[T]o 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 applicants." In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1316
(Fed. Cir. 2000) (citing In re Dance, 160 F.3d 1339, 1343, 48 USPQ2d 1635, 1637
(Fed. Cir. 1998); In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir.
1984)). "[T]he factual inquiry whether to combine references must be thorough and
searching." McGinley v. Franklin Sports, Inc., 262 F.3d 1339, 1351-52, 60 USPQ2d
1001, 1008 (Fed. Cir. 2001).
Here, the examiner fails to allege, let alone show evidence of, the desirability of
combining elements of Arai's third embodiment and elements of JP-U-64-4491. We will
2The examiner also cites Figure 9 of Arai, (Final Rejection at 2), which "show[s]
the fifth embodiment of the invention." Col. 5, ll. 23-24.
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