Appeal No. 96-3874
Application 08/308,186
appellants in the brief and we can think of no reason why it4
would have been obvious to locate an accumulator in the Smith
apparatus at this particular location.
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
by the teachings of the secondary references to incorporate an
accumulator in the system of Smith in the location required by
claim 6.
In light of the foregoing, we will not sustain the
examiner’s standing § 103 rejection of claims 6, 7 and 9 as being
unpatentable over Smith in view of each of Plager, Miller and
Pirsch.
Nor will we sustain the standing § 103 rejection of claims 8
and 10 as being unpatentable over Smith in view of each of
Plager, Miller and Pirsch, and further in view of Webb. In
4See page 6 of the brief (“. . . nor is it clear where to
dampen the pulses on Smith Jr. in the absence of the applicants’
teachings in the present specification.” (emphasis added)).
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