Ex parte AUGUSTO MARCHETTI - Page 10




          Appeal No. 95-2598                                                          
          Application 08/021,230                                                      



          individual constituent modules or units are disclosed or                    
          suggested in either Warshaw or Ulrich.                                      


                    Based on the foregoing, the decision of the examiner              
          rejecting claims 1 and 3 under 35 U.S.C.  103 is reversed.                 


                    We have additionally reviewed the references to                   
          Cavanagh and Twigg applied by the examiner against dependent                
          claims 4 through 8, however, we fail to find in these references            
          anything which would supply the deficiencies already noted above            
          with regard to the basic combination of Warshaw and Ulrich.  In             
          reviewing the teachings of Cavanagh and Twigg, as well as those             


          of Ulrich, we are also of the opinion that the examiner has                 
          inappropriately relied upon hindsight and improperly used                   
          appellant's own disclosure and teachings as a guide through the             
          prior art and the individual diverse elements thereof in                    
          selectively modifying the tape machine of Warshaw in the manner             
          posited by the examiner so as to arrive at the claimed subject              
          matter.  As was made clear in Warner, supra, such a                         
          retrospective, hindsight reconstruction is not permitted by the             
          examiner under 35 U.S.C.  103.  It follows that the examiner's             
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