Appeal No. 2001-0224
Application 09/045,511
(2) incorporate Vizurraga’s hinged longitudinal sides
into Lee’s insert given Lee’s teaching of “lowering the end walls
in order to cut a food item” and Vizurraga’s disclosure that “it
is commonly known to cut food items across their width.”
Id., pages 2-3.
Based on our review of the entire record, we agree with
appellant that the examiner’s rejection can only be based upon
improper hindsight reasoning.
When the claimed invention combines two or more known
elements, “the question is whether there is something in the
prior art as a whole to suggest the desirability, and thus the
obviousness, of making the combination.” Lindemann Maschinen-
fabrik GmbH v. American Hoist & Derrick Co., 730 F.2d 1452, 1462,
221 USPQ 481, 488 (Fed. Cir. 1984)(citations omitted). “[P]ar-
ticular findings must be made as to the reason the skilled
artisan, with no knowledge of the claimed invention, would have
selected the [] components for combination in the manner
claimed.” In re Kotzab, 217 F.3d 1365, 1371, 55 USPQ2d 1313,
1317 (Fed. Cir. 2000). We find that the record is devoid of
these “particular findings.”
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