Appeal No. 2000-0803
Application 05/333,233
shaped component were considered by the artisan to be a
diverter, as proposed by the examiner. Where prior art
references require a selective combination to render obvious a
claimed invention, there must be some reason for the
combination other than hindsight gleaned from the invention
disclosure, Interconnect Planning Corp. v. Feil, 774 F.2d
1132, 1143, 227 USPQ 543, 551 (Fed. Cir. 1985). In the fact
situation before us, it is not apparent to us, and the
examiner has not adequately explained, why one of ordinary
skill in the art would have been motivated by the combined
teachings of Schade and Bryan to retain the end cap of
Schade’s element 26 upon incorporation of a conically shaped
component such as element 50 of Bryan therein. This
constitutes an additional reason necessitating reversal of the
examiner’s rejection of claim 1 to the extent it is based on
Schade as the starting point of the rejection.
For the above reasons, we will not sustain the examiner’s
rejection of claim 1, or claims 4, 6-9 and 11-14 that depend
therefrom, as being unpatentable over Thompson or Schade in
view of Hailstone and Bryan.
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