Appeal 2006-2632 Application 09/881,807 1596, 1598 (Fed. Cir. 1988).1 At best, the Examiner’s reasons for combining the teachings of Narasimhan and Cotteret establish a “general incentive” to make the proposed combination. While a "general incentive" may make an approach "obvious to try" it does not make the invention obvious. In re Deuel, 51 F.3d 1552, 1559, 34 USPQ2d 1210, 1216 (Fed. Cir. 1995). See In re O'Farrell, 853 F.2d 894, 903, 7 USPQ2d 1673, 1680 (Fed. Cir. 1988) ("Obvious to try" is not the standard of obviousness under 35 U.S.C. § 103.). The rejection is reversed. Rejection of claims 32-39, 49-51, 87-94, 104-106, 142-149, and 159- 161 as unpatentable over Narasimhan in view of Cotteret and further in view of Casperson 1See also, Princeton Biochemicals, Inc. v. Beckman Coulter, Inc., 411 F.3d1 1332, 1337, 75 USPQ2d 1051, 1054 (Fed.Cir.2005)(citations omitted): [I]n making the assessment of differences between the prior art and the claimed subject matter, section 103 specifically requires consideration of the claimed invention as a whole.” Inventions typically are new combinations of existing principles or features. The “as a whole” instruction in title 35 prevents evaluation of the invention part by part. Without this important requirement, an obviousness assessment might successfully break an invention into its component parts, then find a prior art reference corresponding to each component. Id. This line of reasoning would import hindsight into the obviousness determination by using the invention as a roadmap to find its prior art components. Further, this improper method would discount the value of combining various existing features or principles in a new way to achieve a new result-often the essence of invention. 7Page: Previous 1 2 3 4 5 6 7 8 NextLast modified: November 3, 2007