Appeal No. 94-1911
Application 07/662,735
founded in the prior art, not in the applicant’s
disclosure.
We have considered the applied prior art teachings jointly
and severably. While we find the sum of all the bits and pieces
of appellants’ claimed method in the collective teachings, we
find no reasonable suggestion that the claimed method should be
carried out and would have a reasonable likelihood of success.
In our view, the examiner’s rejection of Claims 5, 6 and 11
under 35 U.S.C. § 103 on the basis of the combined teachings of
Drahos, Winter, Sick, and Blair results from an impermissible
hindsight reconstruction of the claimed invention. See In re
Gorman, 933 F.2d 982, 987, 18 USPQ2d 1885, 1888 (Fed. Cir. 1991):
It is impermissible . . . simply to engage in a
hindsight reconstruction of the claimed invention,
using the applicant’s [invention] . . . as a template
and selecting elements from references to fill the gaps.
The examiner appears to have added the general teachings of four
references, which more specifically describe separate and
distinct subject matter, into one pot; filtered the general
concepts through a screen constructed from appellants’ disclosure
to find selective concepts; and reassembled the selective
concepts into the method first described by appellants. This is
hindsight, not obviousness within the meaning of 35 U.S.C. § 103.
The Declaration of Curtis A. Lajoie, Ph.D., filed April 23,
1992 (Paper No. 7), was designed to “confirm . . . what is
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