Appeal No. 1999-0032 Page 8
Application No. 08/525,407
Guibert” (Answer, page 4). The determining factor here is not,
however, whether elbows were known in the art, but whether one
of ordinary skill in the art would have been motivated to add
an elbow proximate the air outlet of the Guibert housing. As
was the case with claim 20, we fail to perceive any teaching,
suggestion or incentive which would have led one of ordinary
skill in the art to do so.
As we noted above, the problem of noise reduction has not
been recognized by Guibert. The air issuing from the outlet in
the Guibert device is directed to the applicator by a flexible
tube. The examiner has not explained, and we are at a loss to
find on our own, any reason why the artisan would have added an
elbow. As was the case above, the only suggestion for doing so
resides in the luxury of the hindsight afforded one who first
viewed the appellant’s disclosure. This, of course, is an
improper basis for concluding that a claim is unpatentable. As
our reviewing court stated in In re Fritch, 972 F.2d 1260,
1266, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992),
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. This court has
previously stated that "[o]ne cannot use hindsight
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