Appeal No. 1996-2644
Application 08/232,565
7 USPQ2d 1315, 1318 (Fed. Cir. 1988); In re Geiger, 815 F.2d 686, 688, 2 USPQ2d
1276, 1278 (Fed. Cir. 1987); Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1143,
227 USPQ 543, 551 (Fed. Cir. 1985). The extent to which such suggestion must be
explicit in or may be fairly inferred from, the references, is decided on the facts of each
case, in light of the prior art and its relationship to the invention. It is impermissible,
however, simply to engage in a hindsight reconstruction of the claimed invention using
applicants' specification as a template and selecting elements from references to fill the
gaps. In re Gorman, 933 F.2d 982, 986-987, 18 USPQ2d 1885, 1888 (Fed. Cir. 1991).
As pointed out by appellants (Brief, page 16):
the examiner has not pointed to any objective teaching or
disclosure that would suggest that the isolation structure
disclosed in either the Diccianni or Saint Martin references
could or should be modified to be sealingly mated to an
autoclave fixedly mounted to a building wall such that the
interior of the autoclave is accessible from the interior of the
isolation structure, that the Schwanke sealing arrangement or
any other sealing devices should be employed to seal the
interconnection, or that a releasable securing device . . .
should be employed to maintain the blade within the trough.
We conclude that the rejection before us is predicated on impermissible hindsight
and that the examiner has failed to establish that it would have been obvious to one of
ordinary skill in the art at the time of the invention to combine the teachings of the individual
references to arrive at a sealed system for handling, manipulating, and formulating
materials in an isolated environment which is selectively coupled to an
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