Appeal No. 1997-4118
Application No. 08/381,814
From our perspective, the examiner has relied upon
impermissible hindsight and used appellants’ claimed invention
as an instruction manual or "template" in an attempt to piece
together the teachings of the prior art so that the claimed
invention is rendered obvious. This approach to a
determination of obviousness is improper and cannot be
sanctioned by this Board. See In re Gorman, 933 F.2d 982,
987, 18 USPQ2d 1885, 1888 (Fed Cir. 1991) and Interconnect
Planning Corp. v. Feil, 774 F.2d
1132, 1138, 227 USPQ 543, 547 (Fed. Cir. 1985). Since the
teachings and suggestions found in Brunnhofer and Nawrot would
not have made the subject matter as a whole of independent
claims 9, 16 and 17 on appeal obvious to one of ordinary skill
in the art at the time of appellants’ invention, we must
refuse to sustain the examiner’s rejection of these claims,
and of dependent claims 10 and 15, under 35 U.S.C. § 103.
We have also reviewed the teachings of the patents to
Kerschbaumer and Hart relied upon be the examiner in
rejections of dependent claims 11, 13 and 14 under 35 U.S.C. §
103, however, we find nothing in these references which
supplies that which we have indicated above to be lacking in
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