Appeal No. 2000-1057
Application 09/016,100
Hayashi to have achieved the invention as claimed. See id.,
pages 3-5.
When determining the patentability of a claimed
invention which combines two 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 Maschinenfabrik GMBH v. American Hoist &
Derrick Co., 730 F.2d 1452, 1462, 221 USPQ 481, 488 (Fed. Cir.
1984)(emphasis added). The following comparison of the facts and
reasons relied upon by the examiner in support of obviousness of
the invention versus appellants’ arguments evidences that the
examiner has impermissibly relied upon “hindsight reconstruction
to pick and choose among isolated disclosures in the prior art to
deprecate the claimed invention.” In re Fine, 837 F.2d 1071,
1075, 5 USPQ2d 1596, 1600 (Fed. Cir. 1988).2
2When analyzing a patent claim for obviousness, the claim
should be considered as a whole, although differences between the
claim and the prior art must be identified to place the
obviousness analysis into perspective. Ryko Mfg. Co. v. Nu-Star
Inc., 950 F.2d 714, 717, 21 USPQ2d 1053, 1056 (Fed. Cir. 1991).
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