Appeal No. 95-2665
Application 07/999,609
Guterman as a basic or starting-point reference which is asserted
to teach representative independent claim 5 on appeal except for
certain identified features at page 4 of the answer. Each of the
respective other references is discussed in detail extensively
with the approach to justify the obviousness of modifying
Guterman to account for the claimed differences between his
teachings and that which is set forth in representative
independent claim 5 on appeal.
The reasoning of the examiner at pages 4-6 of the answer
is difficult to follow and does not appear to us to take a
prospective look at the teachings and/or suggestions of each and
all of the references relied upon but, in fact, appears to us to
look at them in prohibitive hindsight using claim 5 to guide the
examiner in a combinability-type reasoning process. This is the
initial argued position of the appellant in the principal brief
on appeal. Thus, we tend to agree with appellant that there has
been a selective picking and choosing by the examiner of the
various features of the representative prior art relied upon to
arrive at the claimed invention. We also conclude that the
examiner essentially therefore has not set forth a prima facie
case of obviousness.
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