Appeal No. 1999-2783
Application No. 08/654,034
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 and the prior
art rather than on the invention as a whole as 35 U.S.C. § 103
requires, as we believe the examiner has done in the present
case. See, e.g., Hybritech Inc. v. Monoclonal Antibodies,
Inc., 802 F.2d 1367, 1375, 231 USPQ 81, 93 (Fed. Cir. 1986),
cert. denied, 480 U.S. 947 (1987).
Since we have determined that Hill is non-analogous prior
art and also that the teachings and suggestions found in
Fussell, Budge and Hill would not have made the subject matter
as a whole of claims 1 through 7, 9 and 10 on appeal obvious
to one of ordinary skill in the art at the time of appellant's
invention, we must refuse to sustain the examiner's rejection
of those claims under 35 U.S.C. § 103(a).
As for the examiner's rejection of dependent claim 8
under 35 U.S.C. § 103(a) as being unpatentable over Fussell,
11
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