Appeal No. 2004-1543 Page 10 Application No. 09/303,991 Based on our analysis and review of Cox and claims 7 to 13, it is our opinion that the differences include (1) synchronizing the analog video outputs by providing a reference signal to phase-locked loop circuitry in at least one of the CMOS image sensors; and (2) maintaining the analog video outputs from the CMOS image sensors in analog format along the entire signal path from the CMOS image sensors to the display. With regard to these differences, the examiner determined (final rejection, pp. 6- 8) that at the time the invention was made it would have been obvious to one with ordinary skill in the art to have modified Cox to (1) use a phase-locked loop as the pixel clock; and (2) maintain the analog video outputs from the CMOS image sensors in analog format along the entire signal path from the CMOS image sensors to the display as taught by Higashitsutsumi. We do not agree. 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 combinationPage: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 NextLast modified: November 3, 2007