Appeal No. 1997-1215
Application No. 08/092,684
the Examiner has used impermissible hindsight to combine the
references, with “Appellant’s own disclosure as a
blueprint...” (Brief-page 2). “The Examiner has not explained
why anyone of ordinary skill, without having had the benefit
of Appellant’s novel teaching before them, would have been
motivated to make the novel combination.” (Brief-page 6.)
The Examiner responds that it is not necessary that
the references actually suggest, expressly or in so many
words, the changes or improvements that Appellant has made,
that it is what the references as a whole would have suggested
to one of ordinary skill in the art, and that such a teaching,
suggestion or inference can be found not only in the
references but also from
knowledge generally available to one of ordinary skill in the
art. (Answer-page 7.)
Thus, both parties agree that motivation to combine
the cited references cannot be found in the references
themselves. Although the Examiner contends that “the
references as a whole” and “knowledge generally available” can
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