Appeal No. 1997-0380
Application No. 08/368,099
examiner's position that it would have been obvious "to
provide the internally threaded bore of Figure 1 with a
frustoconical opening in order to receive a screw with a
frustoconical head as taught in Figure 4" (id.).
It is well settled that it is the teachings of the
prior art taken as a whole which must provide the motivation
or suggestion to combine the references. See Uniroyal, Inc.
v. Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434,
1438 (Fed. Cir. 1988) and Interconnect Planning Corp. v. Feil,
774 F.2d 1132, 1143, 227 USPQ 543, 550-51 (Fed. Cir. 1985).
It is apparent from a reading of Farrington that the
embodiment shown in Figures 1 and 2 was never intended to be
used with a false
head screw having a frustoconical head. Thus, the only
suggestion for combining the different embodiments of the
reference in the manner proposed by the examiner stems from
hindsight knowledge derived solely from the appellant's
disclosure. The use of hindsight knowledge to support a
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