Appeal No. 1998-0503
Application 08/539,858
with lugs which releasably engage shoulders 79 of the side
walls.
We agree with appellants that the examiner's proposed
motivation for combining the teachings of Morawa and Botz,
i.e., "for easy yet precise mounting of a switch" (Answer at
12), is based, improperly, on hindsight obtained from
appellants' disclosure. See In re Dembiczak, 175 F.3d 994,
999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999)("Our case law makes
clear that the best defense against the subtle but powerful
attraction of a hindsight-based obviousness analysis is
rigorous application of the requirement for a showing of the
teaching or motivation to combine prior art references
[Citations omitted]."). As already noted, Morawa's clip is
designed to be fastened to a floor, wall, or roof. The
examiner has not satisfactorily explained why one skilled in
the art would have seen in Morawa and Botz any suggestion to
mount a switch or any other electrical device on such a clip.
Accordingly, the rejection based on Morawa in view of
Botz is reversed as to all of the claims rejected thereover.
- 5 -
Page: Previous 1 2 3 4 5 6 Next
Last modified: November 3, 2007