Appeal No. 2003-0837 Page ~ PAGE ~7~
Application No. 09/078,531
not sufficient to establish a prima facie case of anticipation. When the claimed
invention is not identically disclosed in a reference, and instead requires picking
and choosing among a number of different options disclosed by the reference,
then the reference does not anticipate. Akzo N.V. v. International Trade
Commission, 808 F.2d 1471, 1480, 1 USPQ2d 1241, 1245-46 (Fed. Cir. 1986);
In re Arkley, 455 F.2d 586, 587-88, 172 USPQ 524, 526 (CCPA 1972).
Accordingly, it is our opinion that the examiner failed to meet her burden of
establishing a prima facie case of anticipation.
Similarly, it is our opinion that the examiner failed to meet her burden of
establishing a prima facie case of obviousness. As set forth in In re Kotzab, 217
F.3d 1365, 1369-70, 55 USPQ2d 1313, 1316 (Fed. Cir. 2000):
A critical step in analyzing the patentability of claims pursuant to
section 103(a) 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. … 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.”
…
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].
In other words, “there still must be evidence that ‘a skilled artisan, ... with
no knowledge of the claimed invention, would select the elements from the cited
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