Appeal No. 1999-2666 Page 9
Application No. 08/565,584
or in view of the teachings or suggestions of the inventor.
Para- Ordnance Mfg. v. SGS Importers Int’l, 73 F.3d 1085,
1087, 37 USPQ2d 1237, 1239 (Fed. Cir. 1995)(citing W.L. Gore &
Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1551, 1553, 220
USPQ 303, 311, 312-13 (Fed. Cir. 1983)). “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.” In re
Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir.
1992)(citing In re Gorman, 933 F.2d 982, 987, 18 USPQ2d 1885,
1888 (Fed. Cir. 1991)).
Because Lanier does not address the issue of providing
advise in order to obtain quick reflexive response by the user
of a dynamic game, we are not persuaded that teachings from
the applied prior art would appear to have suggested the
claimed limitations. The examiner has therefore failed to
establish a prima facie case of obviousness. Accordingly, the
rejection of claims 1-8, 14-16 and 20 as obvious over Lanier
in view of Okada under 35 U.S.C. § 103 is reversed.
We turn next to the rejection of claims 11-13 and 21 as
unpatentable over Lanier in view of Okada, further in view of
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