Appeal No. 97-4091
Application 08/382,701
importantly, there is no such per se rule under the precedents of
the Court of Appeals for the Federal Circuit, our reviewing
court.
There must be some reason to duplicate only those parts the
examiner would have duplicated and the putting together of the
duplicated parts as proposed by the examiner must be reasonably
suggested by the prior art as well. The mere fact that the prior
art may be modified in the manner suggested by the Examiner does
not make the modification obvious unless the prior art suggested
the desirability of the modification. In re Fritch, 972 F.2d
1260, 1266, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992). It is also
impermissible to use the claimed invention as an instruction
manual or "template" to piece together the teachings of the prior
art so that the claimed invention is rendered obvious. In re
Fritch, supra. One also cannot use hindsight reconstruction to
pick and choose among isolated disclosures in the prior art.
In re Fine, 837 F.2d 1071, 1075, 5 USPQ2d 1596, 1600 (Fed. Cir.
1988).
It is the burden of the examiner to establish why one having
ordinary skill in the art would have been led to the claimed
invention by the express teachings or suggestions found in the
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