Appeal No. 1999-0405
Application No. 08/651,571
upon impermissible hindsight in attempting to combine Hattori
with Thut or Cooper.
Assuming for argument sake that Hattori is analogous
prior art, we share appellants’ view that there would have
been no motivation and no suggestion in the applied references
for the examiner’s proposed combination of Hattori with Thut
or Cooper. In our opinion, the examiner has used
impermissible hindsight derived from appellants’ own teachings
to combine the molten metal impeller arrangements of Thut and
Cooper involving attaching a silicon carbide bearing ring to a
graphite impeller with the totally disparate adhesion
structure for fluorocarbon polymers taught in Hattori. In
this regard, we note that, as our court of review indicated in
In re Fritch, 972 F.2d 1260, 1266 n. 14, 23 USPQ2d 1780, 1783-
84 n. 14 (Fed. Cir. 1992), it 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. That
same Court has also cautioned against focussing on the
obviousness of the differences between the claimed invention
9
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007