Appeal No. 2005-1293 5
Application No. 09/453,480
Simmons in light of the clearly distinct forms of cutting mechanisms shown in Huston
and Wilhelm so as to arrive at the cushioning conversion machine and method as
defined in the claims on appeal. Instead, as appellants have indicated in their brief and
reply brief, the examiner has merely made certain unsupported findings with regard to
the cutting blade unit of Simmons (reply brief, pages 3-5) and further proposed
providing Simmons with a cutting blade unit like that taught in either Huston or Wilhelm
with no basis in the applied prior art references to support any such modification of
Simmons. As for the examiner’s comments in the paragraph bridging pages 4-5 of the
answer that the secondary references “show that the concept of cutting through a
workpiece entirely to block the path is within the realm of one of ordinary skill in the art,”
we agree with appellants’ assessment in the reply brief that the issue is not whether the
person of ordinary skill in the art had the skill to provide a shutter as claimed to a blade
like that in Simmons, but instead is whether the applied prior art provides such a person
with any suggestion or motivation to do so. In this case, it does not.
In our view, the examiner’s proposed modification of the apparatus and method
of Simmons is based on impermissible hindsight derived from first having read
appellants’ disclosure and claims. As our court of review indicated in In re Fritch,
972 F.2d 1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992), it is impermissible to
use the claimed invention as an instruction manual or "template" in attempting to piece
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