Appeal No. 2002-2123 Page 4
Application No. 09/197,140`
Most if not all inventions arise from a combination of old elements. See In re
Rouffet, 149 F.3d 1350, 1357, 47 USPQ2d 1453, 1457 (Fed. Cir. 1998). Thus, every
element of a claimed invention may often be found in the prior art. See id. However,
identification in the prior art of each individual part claimed is insufficient to defeat
patentability of the whole claimed invention. See id. Lastly, in determining
obviousness/nonobviousness, an invention must be considered "as a whole," 35 U.S.C.
§ 103, and claims must be considered in their entirety. Medtronic, Inc. v. Cardiac
Pacemakers, Inc., 721 F.2d 1563, 1567, 220 USPQ 97, 101 (Fed. Cir. 1983).
In the rejection before us in the appeal, the examiner determined (answer, pp. 5-
9) that it would have been obvious at the time the invention was made to a person of
ordinary skill in the art to (1) modify the apparatus of Hollis by using a plurality of supply
rolls as suggested by McCarville; (2) modify the apparatus of Hollis as modified by
McCarville in (1) above by using cured EPDM membranes rather than uncured EPDM
membranes as suggested by Davis and the Admitted Prior Art; (3) modify the apparatus
of Hollis as modified by McCarville in (1) above to overlap the supply rolls as suggested
by McCarville and/or Cardinal; and (4) modify the apparatus of Hollis as modified by
McCarville in (1) above to utilize pinch rolls as suggested by Cardinal as Hollis' lap
press.
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