Appeal No. 2003-0672 Page 8
Application No. 09/151,886
suggest a generally planar thermal dissipation member formed of a thermally
conductive, electrically-nonconductive ceramic aluminum oxide material having a
thickness of less than about 100 mils (2.5 mm) which extends generally coterminously
with or within the margins of the second heat transfer surface of the source. A critical
step in analyzing the patentability of claims pursuant to 35 U.S.C. § 103 is casting the
mind back to the time of invention, to consider the thinking of one of ordinary skill in the
art, guided only by the prior art references and the then-accepted wisdom in the field.
See In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999).
Close adherence to this methodology is especially important in cases where the very
ease with which the invention 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." Id. (quoting W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721
F.2d 1540, 1553, 220 USPQ 303, 313 (Fed. Cir. 1983)).
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. Rather, to establish obviousness
based on a combination of the elements disclosed in the prior art, there must be some
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007