Appeal No. 96-1687
Application No. 08/192,067
connected together and are removed and inserted together, with a
pair of unconnected, separate cylinders. We think not. Such a
modification would have destroyed the very essence of the Kakko-
Chiloff invention, and we therefore are of the view that this
would have served as a disincentive for the artisan to make the
modification proposed by the examiner. We further observe that
the Bell cylinders also are of the type in which stub shafts
extend outwardly from the central roller portions.
EP ‘559 was cited for its showing of mounting a pair of die
cylinders on tapered arbor assembly sidewalls which cooperate
with tapered recesses in the cylinders. Be that as it may, this
reference fails to overcome the objection we have raised above
with regard to the lack of motivation to combine the teachings of
Kakko-Chiloff and Bell.
For the reason expressed above, we agree with the appellant
that the only suggestion for combining the references in the
manner proposed by the examiner resides in the hindsight accorded
one who first viewed the appellant’s disclosure. This, of
course, is not a proper basis for a rejection. See In re Fritch,
972 F.2d 1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992). It
therefore is our conclusion that the teachings of the three
references cited against claim 1 fail to establish a prima facie
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