Appeal No. 96-2513
Application 08/037,064
file. We see no basis to conclude that the EP Reference, Cullen,
Oonishi, and Grill collectively would have reasonably suggested
that contact pad 34 of the EP Reference should be made of two
homogenous layers, each being plasma-enhanced chemical vapor
deposited or sputter-deposited and that the inner layer should
have a higher wear resistance than the outer layer.
The EP Reference, Cullen, Oonishi and Grill each discloses
something which at least seems to correspond to a claim feature.
However, one cannot use hindsight reconstruction to selectively
pick and choose among isolated disclosures in the prior art
establish a case for obviousness. In re Fine, 837 F.2d 1071,
1075, 5 USPQ2d 1596, 1600 (Fed. Cir. 1988). Here, for reasons
discussed above, the examiner lacks reasonable motivation and
suggestion stemming from the prior art to make the modifications
necessary to result in the appellants' claimed invention.
Accordingly, the rejection of claims 1-8, 12-14, 23-26 and
29-31 cannot be sustained.
Conclusion
The rejection of claims 1-5, 13, 14, 23, 24, 30 and 31
under 35 U.S.C. § 103 as being unpatentable over the EP
Reference, Cullen and Oonishi is reversed.
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