Appeal No. 98-1530
Application No. 08/492,590
a dual axis one, for that would necessitate a wholesale
redesign of the Schenck invention.
For the reasons set forth in the preceding paragraph, it
is our opinion that the combined teachings of Schenck and
Kovacs fail to establish a prima facie case of obviousness
with regard to the subject matter of claims 1, 3, 7, 8, 14, 15
and 18, and we will not sustain this rejection.
The mere fact that the prior art structure could be
modified does not make such a modification obvious unless
suggestion exists for doing so. See In re Gordon, 733 F.2d
900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). It is
impermissible to use the claimed invention 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, 1266, 23 USPQ2d 1780, 1784
(Fed. Cir. 1992). In our view, suggestion for combining the
references in the manner proposed by the examiner is found
only in the hindsight accorded one who first viewed the
appellants’ disclosure.
SUMMARY
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