Appeal No. 1998-2590
Application No. 08/255,083
is impermissible to use the claimed invention as an
instruction manual or “template” to piece together isolated
disclosures and teachings of the prior art so that the claimed
invention is rendered obvious. Notwithstanding that the
examiner might deem the proposed modification to be “within
the level of ordinary skill in the art.” The mere fact that
some prior art references may be modified in the manner
suggested by the examiner does not make such modification
obvious unless the prior art suggested the desirability of the
modification. See In re Gordon, 733 F.2d 900, 902, 221 USPQ
1125, 1127 (Fed. Cir. 1984). Here, the prior art relied upon
by the examiner contains no such suggestion.
Since we have determined that the teachings and
suggestions found in Yamamoto, Powers and Shealy would not
have made the subject matter as a whole of claims 1 through 4
and 8 through 11 on appeal obvious to one of ordinary skill in
the art at the time of appellant’s invention, we must refuse
to sustain the examiner’s rejection of those claims under 35
U.S.C. § 103(a).
10
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007