Appeal No. 1998-2081
Application No. 08/562,009
left column, lines 21-24). In our opinion, this express
statement of the advantages of locating Cohn’s cushioning
element between the insole and the outsole would have acted as
a clear disincentive to one of ordinary skill in the art to
relocate that cushioning element as proposed by the examiner.
Furthermore, the examiner’s proposed “modification” of Cohn is
more along the lines of a complete reworking of the shoe
construction thereof for no apparent reason other than to meet
the terms of the claims.
Our court of review has repeatedly cautioned against
employing hindsight by using the applicant's disclosure as a
blueprint to reconstruct the claimed invention out of isolated
teachings of the prior art. See, e.g., Grain Processing Corp.
v. American-Maize Products Co., 840 F.2d 902, 907, 5 USPQ2d
1788, 1792 (Fed. Cir. 1988). That court has also cautioned
against focusing on the obviousness of the differences between
the claimed invention and the prior art rather than on the
obviousness of the claimed invention as a whole as § 103
requires. See, e.g., Hybritech Inc. v. Monoclonal Antibodies,
Inc., 802 F.2d 1367, 1383, 231 USPQ 81, 93 (Fed. Cir. 1986),
cert. denied, 480 USPQ 947 (1987). We think that, in this
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