Ex Parte ARMINGTON et al - Page 5




              Appeal No. 2003-0204                                                               Page 5                
              Application No. 09/096,123                                                                               


              1598 (Fed. Cir. 1988) and In re Lintner, 458 F.2d 1013, 1016, 173 USPQ 560, 562                          
              (CCPA 1972).                                                                                             


                     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                    
              motivation, suggestion or teaching of the desirability of making the specific combination                








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