Appeal No. 96-4165
Application No. 08/333,292
regard, we note that the examiner has not shown where
Hatakeyama teaches or would have suggested that the ornamental
plates formed by its punch out (shearing) method can be used
in a process as disclosed by De Pass wherein a sheared panel
insert closes an opening in the article formed by an injection
molding step.
The mere fact that the prior art may be modified to
reflect features of the claimed invention does not make the
modification obvious unless the desirability of such
modification is suggested by the prior art. The claimed
invention cannot be used as an instruction manual or template
to piece together the teachings of the prior art so that the
claimed invention is rendered obvious. See In re Fritch, 972
F.2d 1260, 23 USPQ2d 1780 (Fed. Cir. 1992). Accordingly, on
this record, the rejection fails for lack of a sufficient
factual basis upon which to reach a conclusion of obviousness.
See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988).
Accordingly, the rejection of claim 13 under 35 U.S.C. § 103
as unpatentable over De Pass in view of Hatakeyama cannot be
sustained.
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