Appeal No. 2004-0761 Page 4
Application No. 09/794,531
references in light of the later-filed patent application. See In re Dembiczak, 175
F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999): “Measuring a claimed
invention against the standard established by section 103 requires the oft-difficult
but critical step of 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.” In the words of Judge Learned
Hand, obviousness is “the creature of an imagination projected upon the future
out of materials from the past.” Schaefer, Inc. v. Mohawk Cabinet Co., Inc., 276
F.2d 204, 207, 125 USPQ 318, 320 (2d Cir. 1960).
To show that a claimed invention would have been prima facie obvious,
the examiner must provide evidence that the prior art would have suggested the
invention as a whole to those of ordinary skill in the art. “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.” In re Kotzab, 217 F.3d 1365,
1369-70, 55 USPQ2d 1313, 1316 (Fed. Cir. 2000).
In this case, we agree with Appellant that the examiner has not adequately
explained how the cited references would have suggested the method defined by
claim 1 to a person of ordinary skill in the art reading them without the benefit of
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