Appeal No. 2002-1641
Application No. 09/276,213
the optimal spin control system of Ghoneim so as to result in the
subject matter now claimed by appellant. In that regard, we note
that, as our court of review indicated in In re Fritch, 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" to piece together isolated disclosures and
teachings of the prior art so that the claimed invention is
rendered obvious. That same Court has also cautioned against
focussing on the obviousness of the differences between the
claimed invention and the prior art rather than on the invention
as a whole as 35 U.S.C. § 103 requires, as we believe the
examiner has done in the present case. See, e.g., Hybritech Inc.
v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384, 231 USPQ 81,
93 (Fed. Cir. 1986), cert. denied, 480 U.S. 947 (1987).
Since we have determined that the teachings and suggestions
that would have been fairly derived from Schaefer and Ghoneim
would not have made the subject matter as a whole of independent
claims 1 and 10 on appeal obvious to one of ordinary skill in the
art at the time of appellant's invention, we must refuse to
sustain the examiner's rejection of those claims under 35 U.S.C.
§ 103. In addition, we observe that it follows from the above
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