Appeal No. 95-4809
Application 08/104,251
repeatedly cautioned against employing hindsight by using appellant's disclosure as a
blueprint to reconstruct the claimed invention from the isolated teachings of the prior art.
See, e.g., Grain Processing Corp. v. American Maize-Products Co., 840 F.2d 902,
907, 5 USPQ2d 1788, 1792 (Fed. Cir. 1988). We conclude that the combination of
elements taught by Matthews and Becker would not have produced the invention as
claimed. Furthermore, to combine the teachings as asserted by the Examiner to reach the
conclusions asserted by the Examiner concerning obviousness clearly appears to be
impermissible hindsight reconstruction of the claimed invention rather than reasonable
extension of the teachings of the prior art applied against the rejected claims. (See
answer at pages 4-6.)
Since the limitations of independent claims 1 and 12 are neither taught nor
suggested by the applied prior art, we cannot sustain the Examiner's rejection of these
appealed claims under 35 U.S.C. § 103.
Therefore, it follows that we also cannot sustain the Examiner's rejection of
appealed claims 5-8, 10, 11, 13 and 15 which depend therefrom, under 35 U.S.C.
§ 103.
CONCLUSION
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