Appeal No. 97-1092
Application 08/412,491
suggestion for combining such disparate structures in the
manner proposed by the examiner stems from an impermissible
hindsight reconstruction of the appellant’s invention wherein
the claims have been used as a template to selectively piece
together isolated disclosures in the prior art.
This being the case, we shall not sustain the standing 35
U.S.C. § 103 rejection of claim 1, or of dependent claims 4
through 7, as being unpatentable over Magnenat in view of
Henkin. The following new rejections are entered
pursuant to 37 CFR § 1.196(b).
Claim 1, and claims 4 through 14 which depend therefrom,
are rejected under 35 U.S.C. § 112, first paragraph, as being
based on a specification which fails to comply with the
written description requirement of this section of the
statute.
The test for determining compliance with the written
description requirement is whether the disclosure of the
application as originally filed reasonably conveys to the
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