Appeal No. 2003-0690 Page 4
Application No. 09/247,557
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
motivation, suggestion or teaching of the desirability of making the specific combination
that was made by the appellant. See 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).
In this case, while the applied prior art (i.e., Brown, Braud, Hayward, van der Lely
'016 and van der Lely '084) may individually disclose every element of the claimed
invention, it is our opinion that the claimed subject matter as a whole would not have
been obvious at the time the invention was made to a person of ordinary skill in the art
from the teachings of the applied prior art. That is, the claimed vehicle having a
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