Appeal No. 98-2005
Application No. 08/571,156
In the final analysis, the only suggestion for the
combination proposed by the examiner, in our opinion, comes
from
hindsight based upon appellants' own disclosure. It is of
course impermissible to rely on hindsight and to use the
claimed invention as an instruction manual or template to
piece together unrelated teachings of the prior art so as to
arrive the claimed invention, as the examiner has done here.
See In re Gorman, 933 F.2d 982, 987, 18 USPQ2d 1885, 1888
(Fed. Cir. 1991). Accordingly, we will not sustain the
examiner's rejection of claims 1 through 5, 8 through 13 and
16 through 20 under
35 U.S.C. § 103 based on the Admitted Prior Art and Buhl, or
that of claims 1 through 5, 8 through 13 and 17 through 20
under
35 U.S.C. § 103 based on Aoki and Buhl.
As for the examiner’s rejection of dependent claim 16
under 35 U.S.C. § 103 as being unpatentable over Aoki, Buhl
and Watson, we find nothing in Watson which makes up for or
would have been suggestive of the deficiencies in the basic
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