Appeal No. 2001-1786
Application 08/420,796
The examiner has indicated how he finds the claims on
appeal to be obvious over the applied prior art [answer, pages 5-
8]. Appellant has argued in detail the alleged deficiencies of
each of the applied references, the impropriety of combining the
teachings of the applied prior art, and the reasoning behind
appellant’s position that the examiner’s rejection can only be
the result of an improper attempt to reconstruct appellant’s
invention in hindsight [brief, pages 24-41]. The examiner
provides a detailed response in an effort to justify the
rejection [answer, pages 13-25].
We will not sustain this rejection of the examiner for
essentially the reasons provided by appellant in the brief. We
reach this decision primarily because we agree with appellant
that there is no motivation for combining the references in the
manner proposed by the examiner. The proposed combination of the
applied references clearly requires that certain features of each
of the references be selected to the exclusion of other features
of each of the references. Although the examiner purports to
rationalize why this selective use of certain features of the
references would have been obvious to the artisan, we are
compelled to find that the only motivation for combining the
specific selected features of these particular references, while
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