Appeal No. 2004-0763 Page 5
Application No. 09/758,641
As stated by 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].
In this instance, we agree with appellants that the applied references fail to
provide any motivation, suggestion or teaching of the desirability of making the
modification proposed by the examiner. From our perspective, Amonett discloses one
means (interference of the shaft locking pin retention spring 548 with the housing base
control shaft mount 142) for restricting movement of one component (the locking pin)
out of another component (the control shaft) and Yamane discloses a different means
(engagement of the engagement hooks 4b of arms 4a of the clamp with engagement
holes 1b of a support member) for preventing separation of one component (the clamp,
holder and damper assembly) from a second component (the support member). There
is no indication in Amonett or Yamane of the recognition in the prior art1 of a problem of
1 The discussion of a “potential problem” when manufacturing tolerances result in the locking pin
being too thin, thereby causing the locking pin to gradually back out of the control shaft against its friction
fit, on page 8 of appellants’ brief, referred to by the examiner on page 8 of the answer, appears to us to
reflect a recognition by appellants, not a recognition in the prior art, of the problem.
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