Appeal No. 2007-0467 Page 8
Application No. 10/646,929
field. . . . . Close adherence to this methodology is especially
important in cases where the very ease with which the invention
can be understood may prompt one “to fall victim to the insidious
effect of a hindsight syndrome wherein that which only the invention
taught is used against its teacher.”
. . .
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].
In other words, “there still must be evidence that ‘a skilled artisan, . . . with
no knowledge of the claimed invention, would select the elements from the cited
prior art references for combination in the manner claimed.’” Ecolochem Inc. v.
Southern California Edison, 227 F.3d 1361, 1375, 56 USPQ2d 1065, 1075-76
(Fed. Cir. 2000). Contrary to the examiner’s assertion, we find nothing on this
record to suggest modifying the microscopes taught by Takizawa and Harooni by
placing the light source inside the hollow elongated body (e.g., the microscope’s
main housing). While Yamamoto does teach a LED light source integrated into
the same housing as the reminder of the elements of Yamamoto’s pick-up
apparatus, we find little, if any, similarity between Yamamoto’s device and the
microscopes taught by Takizawa and Harooni. In this regard, we do not find, and
the examiner has not identified, any evidence to suggest modifying the structure
of the microscopes taught by Takizawa and Harooni according to the teachings
of Yamamoto.
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