Appeal No. 2006-3032 16
Application No. 09/969,040
upon the instant claims as a template or guide. We note that our reviewing
court has clearly stated: “[d]etermination of obviousness cannot be based
on the hindsight combination of components selectively culled from the prior
art to fit the parameters of the patented invention. There must be a teaching
or suggestion within the prior art, or within the general knowledge of a
person of ordinary skill in the field of the invention, to look to particular
sources of information, to select particular elements, and to combine them in
the way they were combined by the inventor.” ATD Corp. v. Lydall, Inc., 159
F.3d 534, 546, 48 USPQ2d 1321, 1329 (Fed. Cir. 1998).
In the instant case, we conclude that the examiner has impermissibly
used the claimed invention as a template or guide in order to piece together
the teachings of Smith and Oyama in an effort to create a mosaic of such
prior art to argue obviousness. Therefore, we agree with appellants that the
examiner has failed to meet his/her burden of presenting a prima facie case
of obviousness. Accordingly, we will reverse the examiner’s rejection of
representative claim 19. In addition, we will reverse the examiner’s
rejection of independent claims 1 and 13 for the same reasons discussed
supra with respect to claim 19. Because we have reversed the examiner’s
rejection of each independent claim, we will not sustain the examiner’s
rejection of any of the dependent claims under appeal.
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