Appeal No. 1999-0286 Page 12
Application No. 08/777,413
221 USPQ 481, 488 (Fed. Cir. 1984). In determining
obviousness/nonobviousness, an invention must be considered
"as a whole," 35 U.S.C. § 103, and claims must be considered
in their entirety. Medtronic, Inc. v. Cardiac Pacemakers,
Inc., 721 F.2d 1563, 1567, 220 USPQ 97, 101 (Fed. Cir. 1983).
With this as background, it is our opinion that the
appellant (brief, pp. 14-19) is correct that there is no
reason/suggestion/motivation for combining Holcomb and Wiese
in the manner set forth in these rejections. That is, we see
no reason absent the use of impermissible hindsight to have
provided Holcomb's deck member 120 with a plurality of
mounting holes formed in an orderly rank and file
configuration.
Since all the limitations of claims 5, 6 and 9 to 14
would not have been suggested by the applied prior for the
reasons stated above, the decision of the examiner to reject
claims 5, 6 and 9 to 14 under 35 U.S.C. § 103 is reversed.
Rejection (3)
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