Appeal No. 1996-2802 Page 8
Application No. 08/140,142
advised in In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780,
1784 (Fed. Cir. 1992):
It is impermissible to use the claimed
invention as an instruction manual or
"template" to piece together the teachings
of the prior art so that the claimed
invention is rendered obvious. This court
has previously stated that "[o]ne cannot use
hindsight reconstruction to pick and choose
among isolated disclosures in the prior art
to deprecate the claimed invention"
(citations omitted).
Moreover, even considering the teachings of the five references
together in the most favorable light, it is our opinion that
they fail to suggest the particular relationship between the
orientation of the grain of the wood and the operations
performed in the steps of the claim, which is an important
aspect of the appellant’s invention.
The five references cited against claim 1 fail to
establish a prima facie case of obviousness with regard to the
subject matter recited in the claim. Therefore, we will not
sustain the rejection of independent claim 1 or, it follows, of
dependent claims 3-11 and 13.
The examiner has not even mentioned independent claim 18
in the explanation of the rejection found in the Answer, much
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