Appeal No. 1997-3624
Application 08/398,522
the modification obvious unless the prior art suggested the
desirability of the modification. In re Fritch, 972 F.2d
1260, 1266, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992). In the
present case, the references do not suggest, nor has the
examiner explained, why the proposed modification of the
Japanese battery in view of the British reference would have
been desirable. Indeed, the lead cutting constructions
respectively disclosed by the references are quite dissimilar,
and the proposed modification of the Japanese battery in view
of the British reference would involve substantial changes to
the battery. In this light, it is evident that the examiner
has engaged in an impermissible hindsight reconstruction of
the claimed invention using the appellants’ claims as a
template to selectively piece together the teachings of the
prior art.
Accordingly, we shall not sustain the standing 35 U.S.C.
§ 103 rejection of independent claims 1, 16, 27 and 28, or of
dependent claims 3 through 5, 7 through 9, 11 through 14 and
18, as being unpatentable over the Japanese reference in view
of the British reference.
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007