Appeal No. 2003-2125 Page 3
Application No. 09/168,153
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art reference, and to the
respective positions articulated by the appellant and the examiner. Upon evaluation of
all the evidence before us, it is our conclusion that the evidence adduced by the
examiner is insufficient to establish a prima facie case of obviousness with respect to
the claims under appeal.2 Accordingly, we will not sustain the examiner's rejection of
claims 1 to 6 and 9 to 14 under 35 U.S.C. § 103. Our reasoning for this determination
follows.
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
2 In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden of presenting a
prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed.
Cir. 1993).
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