Appeal No. 2002-1198
Application 09/349,306
Gidney in the Williams method of making a shot to improve a
golfer’s performance and the training of a golfer for making a
chip shot” (final rejection, page 4). Like appellant, we see no
basis in the applied references for any such modification of “the
Williams method” and consider that the examiner has engaged in a
hindsight reconstruction of appellant’s claimed method by
impermissibly utilizing appellant’s own disclosure and claims as
a target to be hit by invention-guided manipulation of the
disparate references (brief, pages 5 and 7). In that regard, we
note, as our court of review indicated in In re Fritch, 972 F.2d
1260, 1266, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992), that 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.
In light of the foregoing, it is our determination that the
examiner’s rejection of claim 1 under 35 U.S.C. § 103(a) as being
unpatentable over Williams in view of White and Gidney will not
be sustained.
Turning now to the examiner’s rejection of claim 4 under
35 U.S.C. § 103(a) as being unpatentable over Williams, White,
Gidney and Shiraishi, we have reviewed the Shiraishi patent but
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