Appeal No. 2004-1207 Page 6
Application No. 09/759,411
direction perpendicular to the direction of movement of the slide, to modify Lamb so as
to move caps from the cap feeding chamber 52 toward the cap holding chamber 54 of
Lamb by gas contact rather than by contact with the shuttle 80.
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].
While Young does evidence that the use of direct gas contact to move objects in
dispensing apparatus was known at the time of appellant’s invention, the applied
references provide no teaching or suggestion to use such a propulsion technique in
Lamb to move nail or staple caps from the cap feeding chamber to the cap holding
chamber.
In light of the above, we cannot sustain the examiner’s rejection of independent
claim 1, or claims 4-12, 14, 16 and 17 depending therefrom, as being unpatentable over
Lamb in view of Young. Further, the examiner’s application of the additional references
Pitkin, Butler and Beach provides no cure for the above-noted deficiency of the
combination of Lamb and Young. Consequently, we also cannot sustain the rejections
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