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.
1992):
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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