Ex parte BRIAN S. PETRUCCI - Page 8




          Appeal No. 95-3109                                                          
          Application 08/043,113                                                      


               Where the teachings of the prior art require a selective               
          combination of features in order to render obvious a claimed                
          invention, there must be some reason for the combination other              
          than hindsight gleaned from the invention disclosure,                       
          Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1143, 227               
          USPQ 543, 551 (Fed. Cir. 1985).  In the fact situation before us,           
          we are unable to agree with the examiner that one of ordinary               
          skill in the art would have arrived at the claimed subject matter           
          based on the teachings of Yanagishima.                                      
               In light of the foregoing, we cannot support the examiner’s            
          rejection of claims 1-4, 6, 11-15, 18 and 19 as being                       
          unpatentable over Yanagishima.                                              
               We have also carefully reviewed the Smith reference                    
          additionally relied upon by the examiner in rejecting claims 5              
          and 17, and Skrzycki reference additionally relied upon by the              
          examiner in rejecting claims 7, 16 and 20, but find nothing                 
          therein that makes up for the deficiencies of Yanagishima                   
          discussed above.  Therefore, we also cannot support the                     
          examiner’s rejections of these dependent claims.                            
               The decision of the examiner is reversed.                              




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