Ex parte NAITO - Page 17
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Board of Patent Appeals and Interferences > 1998 > Ex parte NAITO - Page 17
Appeal No. 95-2898
Application 08/053,193
mechanism of Azuma would be inoperable and one may not dissect
a reference taking only so much of that reference as is needed
to anticipate or make obvious claimed subject matter while
completely ignoring the remainder of the teachings of that
reference.
Accordingly, in my view, even if one were to modify
Kikuchi by using the teachings of Azuma, the subject matter of
instant claim 1 would still not have been obvious under 35 U.S.C.
§ 103.
Since the applied references, alone or in combination,
do not suggest the structure of the center core, as claimed, it
appears to me that both the examiner’s rationale for combining
the spring-loaded chucking mechanism of Azuma with the hub of
Kikuchi in such a manner as to result in the claimed subject
matter and the majority’s finding of obviousness to do so are
based on appellants’ own disclosure rather than on anything
taught or suggested by the applied references. The improper use
of hindsight may not be a basis for a conclusion of obviousness
under 35 U.S.C. § 103.
I would reverse the examiner’s decision.
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