Appeal No. 2003-1275 Page 7
Application No. 09/443,456
our reviewing court in In re Kotzab, 217 F.3d 1365, 1369-70, 55 USPQ2d 1313, 1316
(Fed. Cir. 2000):
Most if not all inventions arise from a combination of old
elements. Thus, every element of a claimed invention may
often be found in the prior art. However, identification in the
prior art of each individual part claimed is insufficient to
defeat patentability of the whole claimed invention. 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
applicant [citations omitted].
Koser’s teaching of using a slide or swivel arm to move a trimming device such as a
grinding disc or saw blade to finish the ends of a pipe bend would have provided no
suggestion to use such manipulation devices for the laser head of Hashimoto. We thus
shall not sustain the examiner’s rejection of claims 9 and 11-16.
We turn finally to the rejection of claims 1, 5-8, 10, 11, 13-17, 23, 25 and 27-30
as being anticipated by Prinz. Prinz discloses an automated system for forming objects
by the incremental buildup of layers on a work surface at a material deposition station
32 and operations on the layers at stations 62, 70, 58, 66, 56, 60, 50 and 52.
Appellants appear to be arguing on page 21 of their brief that Prinz does not disclose a
“forming system” (claim 1) or “process of forming” (claim 27) because material
deposition is not “forming” as that term is used in the art. Even if “forming” is not
considered to include material deposition steps, at least the additional operation of
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007