Ex parte COLLINS - Page 7

          Appeal No. 96-3919                                                          
          Application 08/224,163                                                      

               Given the differences in structure and function of the                 
          devices of Downes and Manzardo, it is not at all apparent to us,            
          and the examiner has not adequately explained, how he proposes to           
          modify Downes in view of Manzardo’s teachings to arrive at the              
          claimed subject matter (i.e., a cap having a blade portion                  
          extending between the pages of a book).  In contrast to the                 
          appellant’s device, wherein the cap of a writing implement is               
          used as a bookmark, Downes and Manzardo are directed to                     
          alternative arrangements wherein the writing implement itself is            
          used as a bookmark.  Furthermore, absent appellant’s disclosure,            
          it is not clear to us why one of ordinary skill in the art would            
          have been motivated to undertake any such modification of one of            
          these references in view of the other.                                      
               Where prior art references require a selective combination             
          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 been motivated             
          to combine the teachings of Downes with those of Manzardo in a              
          manner which would have resulted in the claimed subject matter.             


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