Appeal No. 1998-1937
Application No. 08/518,509
the addition of not only the tension springs of Holmes in
Carson, but
also the connecting link 25 and compensating bars 12, which,
in our view, would not result in the subject matter of claim 3
since the springs would be connected to the compensating bars
12 via connecting links 25 rather than to the middle portions
of the stays.
Where, as here, the prior art references require a
selective combination of reference teachings to render obvious
a claimed invention, there must be some reason for the
combination other than hindsight gleaned from the invention
disclosure, Interconnect Planning Corp. v. Feil, 774 F.2d
1132, 1143, 227 USPQ 543, 551 (Fed. Cir. 1985). In the fact
situation before us, we are unable to agree with the examiner
that one of ordinary skill in the art would have been
motivated by the teachings of Holmes to incorporate the
counterbalance arrangement thereof into Carson in a manner
that would have resulted in the subject matter
of claim 3. We therefore shall not sustain the standing § 103
rejection of claim 3 as being unpatentable over Carson in view
of
Holmes.
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