Appeal No. 1998-3380
Application 08/542,591
line 23 - col. 5, line 25, where it is taught that for probe 7
to operate properly there must be an interaction among the
various components depicted in Figure 5. However, we cannot
support the examiner's position regarding the claimed
limitation of "a power supply ...., for power supplied by the
computer." Specifically, the Examiner suggested the
combination of Kogure and Siegel with Crowder to meet this
limitation. Appellants argue, brief at page 9, that "the
Examiner is relying on such an improper hindsight
reconstruction, which cannot be used for rejecting the claims
of the present application." We agree with Appellants that an
Examiner cannot use an inventor's disclosure as a road map for
selecting and combining prior art disclosures.
Therefore, we do not sustain the obviousness rejection of
claim 1 over Crowder, Kogure and Seigel. Since the other
claims of this group, namely 6-15, each contain at least this
limitation, we cannot sustain their rejection over Crowder,
Kogure and Seigel.
Parenthetically, we note that with respect to the
rejection of claim 12, the examiner also adds Warren to the
combination of Crowder, Kogure and Seigel, however, Warren
-8-
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