Appeal No. 2001-1667
Application No. 09/117,280
rollers as required by the claims on appeal.3 In fact, the
examiner's comment that the fiber in the Hart-Päivinen
combination "would not be displaced for the same reasons there is
no displacement in applicant’s invention" is telling of his use
of hindsight in the selection of Hart and Päivinen to create a
case of obviousness. See Examiner's Answer, page 5.
We are further in agreement with appellant that, at best,
the examiner has shown that it might be "obvious to try"
Päivinen's two roller system in the method of Hart. See Appeal
Brief, page 6. The examiner relies on Hart's teaching that "all"
appropriate twisting means may be utilized as providing a
suggestion to use, as opposed to merely try, a two roller system.
See Examiner's Answer, page 6. However, it is well settled that
"a rejection can not be predicated on the mere identification . .
. of individual components of claimed limitations. Rather,
particular findings must be made as the reason the skilled
3 The examiner urges that "common sense would indicate that if
one could twist the continuous length cable with two wheels like
Päivinen does then one can twist an optical fiber." Examiner's
Answer, page 5. Such argument is completely unavailing given the
Federal Circuit's holding in In re Lee, wherein the Court held
that reliance on "common knowledge and common sense" do not
fulfill the requirement to provide reasons in support of a
finding of obviousness. See Thrift, 298 F.3d at 1364, 63 USPQ2d
at 2006 (quoting Lee, 277 F.3d 1338, 1344-45, 61 USPQ2d 1430,
1435 (Fed. Cir. 2002)).
-7-
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007