Appeal No. 2002-1911 Page 13
Application No. 09/598,087
on the facts of each case, in light of the prior art and its relationship to the appellants'
invention. As in all determinations under 35 U.S.C. § 103, the decision maker must
bring judgment to bear. It is impermissible, however, simply to engage in a hindsight
reconstruction of the claimed invention, using the appellant's structure as a template
and selecting elements from references to fill the gaps. The references themselves
must provide some teaching whereby the appellant's combination would have been
obvious. In re Gorman, 933 F.2d 982, 986, 18 USPQ2d 1885, 1888 (Fed. Cir. 1991)
(citations omitted). That is, something in the prior art as a whole must suggest the
desirability, and thus the obviousness, of making the combination. See In re Beattie,
974 F.2d 1309, 1312, 24 USPQ2d 1040, 1042 (Fed. Cir. 1992); Lindemann
Maschinenfabrik GmbH v. American Hoist and Derrick Co., 730 F.2d 1452, 1462, 221
USPQ 481, 488 (Fed. Cir. 1984).
In this rejection (final rejection, pp. 4-5), the examiner (1) set forth the pertinent
teachings of Mehney and Kiuchi; (2) ascertained4 that Mehney fails to disclose "a full
bridge strain gage assembly only on a top or bottom and a groove formed opposite the
sensor;" and (3) concluded that it would have been obvious to one of ordinary skill in
4 After the scope and content of the prior art are determined, the differences between the prior art
and the claims at issue are to be ascertained. Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ
459, 467 (1966).
Page: Previous 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 Next
Last modified: November 3, 2007