Appeal No. 1997-3709
Application 08/582,034
hexagonal cross-section while retaining the passageway
construction concept of Wirth that involves uniformly changing
the shape of the passageway in two directions along its
length, the subject matter of independent claims 3 and 10
would result. Notwithstanding the above, we are unable to
agree with the examiner that the combined teachings of these
two references would have suggested to one of ordinary skill
in the art their combination in a manner that would have
resulted in the claimed subject matter.
Where prior art references require a selective
combination to render obvious a claimed invention, there must
be some reason for the combination other than hindsight
gleaned from the invention disclosure, Interconnect Planning
Corp. v. Feil, 774 F.2d 1132, 1143, 227 USPQ 543, 551 (Fed.
Cir. 1985). In the fact situation before us, when we forget
about what appellants have done and focus only on the
teachings of the applied references, we see no cogent reason
for the examiner’s proposed selective combination of Wirth and
Herbulot. In particular, the examiner’s rationale that the
choice of cross-sectional shape “is well within the level of
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