Appeal No. 2003-0811 Page 6
Application No. 09/285,290
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 our view, the claimed subject matter is not suggested by the applied prior art.
In that regard, while individual elements of the claimed invention may be taught in the
applied prior art, the invention, as a whole, is not taught or suggested by the applied
prior art. In that regard, while the examiner's primary reference to Sennott does
disclose a vehicle having both a global positioning system (GPS) receiver and a wheel
and travel distance measuring means, Sennott does not disclose any of the above-
noted five limitations of the claimed subject matter. Likewise, while Bounds discloses a
system for applying ballast along a section of railroad including a railroad car having a
ballast hopper and a pair of hopper doors engaged with the hopper and operable to
open and close to thereby control discharge of ballast from the hopper, Bounds does
not disclose any of the last four limitations of the claimed subject matter noted above.
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