Appeal No. 2004-2315
Application No. 09/348,155
held between a second set of tapes (tapes 13 and 35, or tapes
15 and 37). While we appreciate that Carricato may be viewed as
broadly disclosing the concept of providing grippers for gripping
both the front and tail edges of a sheet, why one of ordinary
skill in the art would have resorted to Carricato’s complex
articulated tail edge gripper 44 arrangement as an incentive for
providing a tail edge gripper in Rahe as an alternative to brush
guide 81 has not been adequately explained by the examiner. This
is especially so in that the tail edge gripper of Carricato
relied upon by the examiner is specifically designed to solve a
problem (depositing a sheet onto a pile without disturbing
previously deposited sheets) that does not appear to exist in
Rahe, at least not at the point of the proposed modification.
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].
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