Ex Parte Sloot - Page 4




            Appeal No. 2004-1917                                                          Page 4              
            Application No. 09/853,096                                                                        


            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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