Appeal No. 2004-1223 Page 10
Application No. 09/842,142
invention taught is used against its teacher." Id. (quoting W.L. Gore & Assocs., Inc. v.
Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 313 (Fed. Cir. 1983)).
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
1635, 1637 (Fed. Cir. 1998); In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127
(Fed. Cir. 1984).
The motivation, suggestion or teaching may come explicitly from statements in
the prior art, the knowledge of one of ordinary skill in the art, or, in some cases the
nature of the problem to be solved. See Dembiczak, 175 F.3d at 999, 50 USPQ2d at
1617. In addition, the teaching, motivation or suggestion may be implicit from the prior
art as a whole, rather than expressly stated in the references. See WMS Gaming, Inc.
v. International Game Tech., 184 F.3d 1339, 1355, 51 USPQ2d 1385, 1397 (Fed. Cir.
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