Appeal No. 1998-2368 Page 7
Application No. 08/443,217
The examiner also fails to show a suggestion of the
limitations in the prior art. “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 Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed.
Cir. 1984)). "Expedients which are functionally equivalent to
each other are not necessarily obvious in view of one another.
The statutory mandate of 35 U.S.C. 103 is that the claimed
subject matter be unobvious at the time the invention was made
to a person having ordinary skill in the art to which the
subject matter pertains." In re Scott, 323 F.2d 1016, 1019,
139 USPQ 297, 299 (CCPA 1963). “‘[T]he question is whether
there is something in the prior art as a whole to suggest the
desirability, and thus the obviousness, of making the
combination.’” In re Beattie, 974 F.2d 1309, 1311-12, 24
USPQ2d 1040, 1042 (Fed. Cir. 1992) (quoting Lindemann
Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d
1452, 1462, 221 USPQ 481, 488 (Fed. Cir. 1984)).
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