Appeal No. 97-1621
Application 08/073,586
answer, Paper No. 16). With regard to these deficiencies, the
examiner concludes that it would have been obvious to one of
ordinary skill in the art “to have substituted a movable carriage
carrying both a clamp and an upstream cutter for Stroup, Jr’s
movable clamp for the advantage of continuously (instead of
incrementally) feeding the coiled tubing stock as taught by
Suarez et al” (answer, page 9) and “to modifiy [sic, modify] the
stretcher of Stroup, Jr. to have movable lower rollers for the
purpose of maintaining a constant web velocity as taught by Sato”
(answer, page 10).
We agree with the appellants, however, that this proposed
combination of references is unsound (see pages 5 through 18 in
the main brief, Paper No. 15). Given the disparate natures of2
the machines disclosed by Stroup, Suarez and Sato, it is apparent
that the examiner has engaged in an impermissible hindsight
reconstruction of the appellants’ invention by using claim 1 as a
template to selectively pick and choose from among isolated
disclosures in the prior art. Moreover, even if the references
were combined in the manner proposed by the examiner, the
2The record (see Paper Nos. 18 and 21) indicates that the
examiner has refused entry of the reply brief filed by the
appellants on February 10, 1997 (Paper No. 17). Accordingly, we
have not considered the arguments advanced in the reply brief in
reviewing the merits of this appeal.
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