Appeal No. 1998-0514
Application 08/523,907
However, this would not have resulted in a cross cutter having
any of the enumerated differences noted above. In particular,
we find no disclosure, suggestion, or inference in the
teachings of German ‘516 and Gomi, taken either alone or
collectively, that the cutter holders and/or the
counterweights of German ‘516 should be formed from composite
fiber material, much less that they should be formed for the
same composite fiber material as the cutter cylinders, or from
the composite fiber material should have a heat expansion
coefficient substantially equal to or less than 0 mm/K.
Where prior art references require a selective
combination to render obvious a claimed invention, there must
be some reason for the combination other than hindsight
gleaned from the
invention disclosure, Interconnect Planning Corp. v. Feil, 774
F.2d 1132, 1143, 227 USPQ 543, 551 (Fed. Cir. 1985). In the
fact situation before us, we are unable to agree with the
examiner that one of ordinary skill in the art would have been
motivated by the teachings of Gomi to form the cutter
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