Appeal No. 2001-1350
Application No. 09/188,766
972 F.2d 1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992), it is
impermissible to use the claimed invention as an instruction
manual or "template" in attempting to piece together isolated
disclosures and teachings of the prior art so that the claimed
invention is rendered obvious.
Since we have determined that the teachings and suggestions
found collectively in the APA and Isaji would not have made the
subject matter as a whole of independent claims 1 and 3 on appeal
obvious to one of ordinary skill in the art at the time of
appellants' invention, we must refuse to sustain the examiner's
rejection of those claims under 35 U.S.C. § 103(a). It follows
that the examiner's rejection of dependent claims 2 and 5 through
9 under 35 U.S.C. § 103(a) on that same basis will likewise not
be sustained.
We have additionally reviewed the examiner's rejection of
dependent claim 4 under 35 U.S.C. § 103(a) based on the APA,
Isaji and Official Notice. However, the examiner's invocation of
Official Notice concerning the prior existence of hermetically
sealed motor/compressor structural units does nothing to supply
that which we have found above to be lacking in the basic
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