Appeal No. 1999-0050
Application 08/499,111
in the art at the time the invention was made to
provide the apparatus of Jeschke et al with non-
circular section gripper bases . . . in view of Kirn
et al. so as [to] adjust the gripper base to
correspond to varying thicknesses of the paper
[answer, pages 4 and 5].
Kirn’s disclosure of a percussion drilling machine,
however, is far removed from Jeschke’s disclosure of a sheet-
guiding drum. Given the disparate natures of these devices,
it is apparent that the examiner has engaged in an
impermissible hindsight reconstruction of the appellants’
invention by utilizing the appealed claims as a blueprint to
selectively pick and choose from among isolated disclosures in
the prior art. Therefore, we shall not sustain the standing
35 U.S.C. § 103(a) rejection of
independent claim 1 or of claims 4, 5, 9, 10 and 15 through 17
which depend therefrom.2
2 Our review of claims 4 and 5 in light of the underlying
disclosure (see the third paragraph on specification page 5)
indicates that the particular gripper base embodiments defined
in these claims are mutually exclusive to the gripper base
embodiment recited in parent claim 1 (“a roller having a
periphery formed of a plurality of surfaces at different
distances from a center of roller”). These inconsistencies,
apparently introduced inadvertently in the amendment filed
January 16, 1997 (Paper No. 5), are deserving of correction in
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