Ex parte YASUTOSHI AOKI, et al. - Page 6

          Appeal No. 94-3608                                                          
          Application 07/844,980                                                      

               Including the admitted prior art, the examiner has relied              
          upon the combined teachings of five references to meet the seven            
          limitations recited above in the two independent claims in the              
          first of the two rejections, and four references in the second.             
          However, essentially for the reasons expressed by the appellants            
          on pages 10 through 17 of the Brief, it is our view that the                
          combined teachings of the references cited in each of the two               
          rejections of independent claims 1 and 13 fail to establish a               
          prima facie case of obviousness with regard to the subject matter           

          of these claims.  In particular, it is our opinion that even                
          assuming, arguendo, that the features recited in these two claims           
          exist individually in the references relied upon, the only                  
          suggestion for combining them in the manner proposed by the                 
          examiner is found in the hindsight accorded one who first viewed            
          the appellants' disclosure.  As our reviewing court stated in In            
          re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir.             
               It is impermissible to use the claimed invention as an                 
               instruction manual or "template" to piece together the                 
               teachings of the prior art so that the claimed                         
               invention is rendered obvious.  This court has                         
               previously stated that "[o]ne cannot use hindsight                     
               reconstruction to pick and choose among isolated                       


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