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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