Appeal No. 2006-1067 Page 5
Application No. 09/822,839
The mere fact that the prior art could be so modified would not have made the
modification obvious unless the prior art suggested the desirability of the modification.
See In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992); In
re Mills, 916 F.2d 680, 682, 16 USPQ2d 1430, 1432 (Fed. Cir. 1990); In re Gordon, 733
F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). 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].
While a turntable could be added to the outfeed conveyor system of Monsees to
turn the blanks in a plane thereof, there is no suggestion in the applied references to do
so. In particular, there is no indication in either Monsees or Fujishiro that turning of the
blanks in a plane thereof would be either necessary or desirable, for subsequent
operations or any other purpose. The examiner’s proposed modification of Monsees
thus appears to be based on impermissible hindsight gleaned from reading appellant’s
specification. It follows that we cannot sustain the rejection of claim 1 or claim 4
depending therefrom.
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