Appeal No. 95-4526
Application 08/200,251
in the Japanese ‘727 patent. The Examiner has never suggested
that the bicomponent cover should be completely covered with
apertures” (answer, pages 6-7).
While we appreciate that Nosaki’s liquid permeable
surface area is a “bicomponent” in the sense that the bands 2
and 3 are separate pieces made of different materials, we are
unable to agree with the examiner’s position that the
ordinarily skilled artisan would have focused exclusively on
this feature of Nosaki in modifying Sukiennik, as proposed by
the examiner. Where prior art references require a selective
combination to render obvious a claimed invention, there must
be some reason for the combination other than hindsight
gleaned from the invention disclosure, Interconnect Planning
Corp. v. Feil, 774 F.2d 1132, 1143, 227 USPQ 543, 551 (Fed.
Cir. 1985). Here, the examiner’s motivation for the proposed
modification of Sukiennik is “to simplify the manufacturing
process” (final rejection, page 4).
We agree with appellants, however, that the proposed use of
multiple pieces in the fabrication of Sukiennik’s cover would
more likely complicate the manufacturing process thereof. In
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