Appeal No. 99-0638 Page 6
Application No. 08/679,023
invention, absent some teaching or suggestion supporting the
combination." ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732
F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984). Here,
the prior art contains no such teaching or suggestion. Hladky
teaches a two-piece hinged clamping device for providing a
quick change attachment of two shafts together in the context
of replacing a working roll assembly in a rolling mill. In
view of the disparate nature of Hladky vis-á-vis the vibration
cancelor of Wolf, we are at a loss to understand why one of
ordinary skill in the art would have been motivated to combine
these two references in the manner proposed by the examiner.
Therefore, it is our opinions that the reference
combination proposed by the examiner stems only from an
impermissible hindsight reconstruction of the appellants'
invention wherein the examiner has used the claims as a
template to selectively piece together isolated disclosures in
the prior art. See In re Fritch, 972 F.2d 1260, 1266, 23
USPQ2d 1780, 1784 (Fed. Cir. 1992).
Accordingly, we cannot sustain the standing rejection of
claims 1, 2, 5, 6 and 12 through 15 under 35 U.S.C. § 103.
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