Appeal No. 2001-0080
Application No. 08/577,217
specification as a template to piece together isolated teachings
in the prior art to arrive at the conclusion of obviousness.
In re Warner, 397 F.2d 1011, 1016, 154 USPQ 173, 177 (CCPA 1967)
("[W]here the invention sought to be patented resides in a
combination of old elements, the proper inquiry is whether
bringing them together was obvious and not, whether one of
ordinary skill, having the invention before him, would find it
obvious through hindsight to construct the invention from
elements of the prior art."); In re Rouffet, 149 F.3d 1350,
1359, 47 USPQ2d 1453, 1459 (Fed. Cir. 1998) ("[T]he Board must
explain the reasons one of ordinary skill in the art would have
been motivated to select the references and to combine them to
render the claimed invention obvious.").
As a final point, we note that the appellants have relied
on experimental data provided in the specification as evidence
of nonobviousness. (Appeal brief, page 15.) The examiner,
however, does not even acknowledge this evidence. While we do
not need to address the sufficiency of the evidence in this
case, we point out that the examiner's failure to specifically
discuss the evidence constitutes reversible error.
In summary, we reverse the examiner’s 35 U.S.C. § 103(a)
rejection of all the appealed claims as unpatentable over the
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