Appeal No. 2003-0187
Application No. 09/134,109
nor a finger mechanism of the type defined in appellants’ claims
on appeal. However, the examiner points to the retaining fingers
(40) of the molded plastic drill bit container of Hanson and the
V-shaped recesses of Gühring and Vasudeva (Fig. 9), from which
teachings it appears the examiner considers that it would have
been obvious to modify a tool insert like that seen, for example,
in Figure 5 of Cheng by providing “a variety of shapes and
retaining fingers for the tool receiving member of Cheng et al to
better secure tools with similar shapes and sizes” (answer, pages
5-6).
Like appellants (brief, pages 9-10), given the construction
of the tool retaining inserts seen in Cheng (Figs. 4 and 5), we
find that there would be no need, and thus no motivation except
that derived from impermissible hindsight, for modifying the tool
retaining inserts of Cheng in the manner proposed by the
examiner. In that regard, we note, as our court of review
indicated in In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780,
1784 (Fed. Cir. 1992), that it is impermissible to use the
claimed invention as an instruction manual or "template" in
attempting to piece together isolated disclosures and teachings
of the prior art so that the claimed invention is rendered
12
Page: Previous 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 Next
Last modified: November 3, 2007