Appeal No. 1999-0304
Application No. 08/520,606
the function thereof clearly differ from the claimed
invention.
Appellants also argue (Brief, pages 18, 21, and 22 and
Reply Brief, page 5) that the examiner has provided no
explanation or suggestion in the references as to how and why
the modifications necessary to arrive at the claimed invention
could be done. Appellants accuse the examiner (Reply Brief,
pages 4, 5, and 7) of engaging in impermissible hindsight, as
the examiner has resorted to picking and choosing elements
from the prior art with no suggestion as to how to combine
them to form the claimed invention. Again, we agree with
appellants.
For a rejection under 35 U.S.C. § 103, the examiner is
required to provide a reason from some teaching, suggestion or
implication in the prior art as a whole, or knowledge
generally available to one of ordinary skill in the art, why
one having ordinary skill in the pertinent art would have been
led to modify the prior art to arrive at the claimed
invention. Uniroyal, Inc. v. Rudkin-Wiley, 837 F.2d 1044,
1052, 5 USPQ2d 1434, 1438 (Fed. Cir. 1988), cert. denied, 488
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