Appeal No. 1999-1123
Application No. 08/576,915
simply has no bearing on the issue of whether the combination
of Dahlquist and Higuchi is proper.” Appellants also argue
(brief, page 9) that “Kapes itself provides no teachings
beyond that of Dahlquist and Higuchi given that it too is
devoid of any disclosure or suggestion of controlling the
driving current for a printing dot based upon a combination of
correction data and gradation data as set forth in the
claims.” Thus, appellants conclude (brief, pages 9 and 10)
that:
Each of Dahlquist, Higuchi, and Kapes operate in
a manner fundamentally different than the claimed
invention. What the Examiner has done is pluck
individual circuit elements from Dahlquist and
Higuchi and combine them to produce Appellants’
invention using Appellants’ own claims as a guide.
This is clearly improper . . . . Because the
necessary motivation is missing in this case, the
Examiner is engaging in impermissible hindsight
reconstruction.
We agree with appellants’ arguments. Accordingly, the
obviousness rejection of claims 9 through 16 is reversed.
DECISION
The decision of the examiner rejecting claims 9 through
16 under 35 U.S.C. § 103(a) is reversed.
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