Appeal No. 95-3317
Application No. 07/937,522
repeatedly cautioned against employing hindsight by using the
applicant's disclosure as a blueprint to reconstruct the
claimed invention from the isolated teachings in the prior
art. See, e.g., Grain Processing Corp. v. American Maize-
Prods. Co.,
840 F.2d 902, 907, 5 USPQ2d 1788, 1792 (Fed. Cir. 1988).
It is our opinion that the examiner has not provided a
sufficient factual basis from which to conclude that
appellant’s claimed invention as a whole including the
differences noted above between the independent claims on
appeal and the process of Nitzsche would have been obvious to
one having ordinary skill in the art in view of the teachings
of Vohrer. In particular, Vohrer fails to even teach the
steps of (1) "taking a resilient sheet having an inner layer
of adhesive", (2) "heating the sheet until the adhesive layer
becomes tacky", or
(3) "rolling the tube over the adhesive layer to wrap the
sheet around the tube" (emphasis added), all required by the
independent claims on appeal.
Furthermore, as stated in W.L. Gore & Assocs. Inc. v.
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