Appeal No. 1996-1243
Application No. 08/226,224
The examiner reads exemplary claim 27 on various portions
of the three applied prior art references [answer, pages 5-6].
The examiner broadly concludes that it would have been obvious
to the artisan to combine these various features of the
applied prior art. Appellants note the related features of
each of the applied references, but appellants argue that the
references, either alone or in combination, do not teach or
suggest the specific steps and means recited in each of the
independent claims on appeal [brief, pages 6-9]. The
examiner’s response appears to be a contention that the same
results and goals of the claimed invention are achieved in
Weinblatt which establishes obviousness under 35 U.S.C. § 103
[answer, pages 8-13]. Appellants respond that the specific
functions recited in the appealed claims are not performed by
the applied prior art even if a similar result is achieved
[reply brief].
We agree with the position argued by appellants. It
would be enough to point out that the examiner has simply
taken disparate teachings from three prior art references and
improperly combined them in an effort to reconstruct the
invention in hindsight. In other words, the examiner has not
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