Appeal No. 1997-2384 Page 9
Application No. 08/430,083
were selected by the examiner in a manner so as to arrive at
the claimed invention herein and such that the ordinarily
skilled artisan would have had a reasonable expectation of
success in making this modification. See In re Vaeck, 947
F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991); In re
O’Farrell, 853 F.2d 894, 902, 7 USPQ2d 1673, 1680 (Fed. Cir.
1988); In re Longi, 759 F.2d 887, 892-93, 225 USPQ 645, 648
(Fed. Cir. 1985).
We note that the mere fact that the prior art may be
modified to reflect features of a claimed invention does not
make the modification(s) obvious. Appellants’ invention
cannot be used as an instruction manual or template to piece
together the teachings of the prior art so that the claimed
invention is rendered obvious. See In re Fritch, 972 F.2d
1260, 23 USPQ2d 1780 (Fed. Cir. 1992).
For the foregoing reasons, we find that the examiner has
not established a prima facie case of obviousness. Because we
reverse on this basis, we need not reach the issue of the
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