Appeal No. 1998-1440 Page 12
Application No. 08/368,452
modified in the manner suggested by the Examiner does not make
the modification obvious unless the prior art suggested the
desirability of the modification.” In re Fritch, 972 F.2d
1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992) (citing In
re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir.
1984)). “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.” In re Fritch, 972 F.2d 1260, 1266, 23
USPQ2d 1780, 1784 (Fed. Cir. 1992)(citing In re Gorman, 933
F.2d 982, 987, 18 USPQ2d 1885, 1888 (Fed. Cir. 1991)).
Here, the examiner admits, "Haruta et al. does not
disclose ... the polyurethane foam being immersed in the water
for at least about 6 hours ...." (Examiner's Answer at 4.)
This is an understatement. The reference actually discloses
washing a foam ink pad for seconds or minutes. Specifically,
"[s]atisfactory washing time is usually as few as ten seconds
to minutes in case of polar solvents. In case of washing by
rubbing or repeated pressing, a few ten seconds are
satisfactory." Col., 23, ll. 58-61.
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