Appeal No. 98-1292
Application No. 08/570,835
disclosure. See, for example, Uniroyal, Inc. v. Rudkin-Wiley
Corp., 837 F.2d 1044, 1052, 5 USPQ2d 1434, 1439 (Fed. Cir.),
cert. denied, 488 U.S. 825 (1988). The examiner’s position
is that the basic structure recited in the two independent
claims is disclosed by Gulden, and that it would have been
obvious to one of ordinary skill in the art to modify Gulden
by covering the entire surface with plenums each defined by a
disk having raised edges, in view of Carne, then substitute O-
rings for Carne’s raised edges in view of Meinel, then to
substitute a toroidal O-ring groove for Meinel’s groove of
square cross-section, in view of Effner, then to substitute a
blower for Gulden’s vacuum pump to provide the negative
pressure, in view of Kitagawa. The appellant argues that this
is a wholesale redesign of the Gulden device based upon
hindsight reasoning, and that even if this were a proper
combining of references, the result would not be the claimed
invention.
The examiner’s position is fatally defective at the
outset for, even assuming, arguendo, that the reasons for
combining the references in the manner proposed are proper,
the resulting structure fails to meet one requirement of the
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