Appeal No. 2005-0333
Application No. 09/918,074
U.S.C. § 103 as unpatentable over the combined disclosures of
Reinhardt, Sibley and Larsen.
OPINION
As stated 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. See In re Rouffet, 149 F.3d 1350, 1357, 47
USPQ2d 1453, 1457 (Fed. Cri. 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 applicant. 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). (Emphasis added).
Here, as correctly argued by the appellant, the examiner has
not identified any motivation, suggestion or teaching of the
desirability of employing a fish-luring aromatic, such as the one
taught in Sibley, in the artificial flower of the type discussed in
Reinhardt. To employ a fish-luring aromatic as proposed by the
examiner would be to render the artificial flower described in
Reinhardt unsuitable for its intended purpose. See Gordon, 733
F.2d at 902, 221 USPQ at 1127; Ex parte Hartman, 186 USPQ 366, 367
(Bd. App. 1974).
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