Appeal No. 2003-0508 Page 7
Application No. 09/449,023
hindsight by using the appellants’ disclosure as a blueprint to
reconstruct the claimed invention from the isolated teachings of
the prior art. See, e.g., Grain Processing Corp. v. American
Maize-Products Co., 840 F.2d 902, 907, 5 USPQ2d 1788, 1792 (Fed.
Cir. 1988). From our perspective, the examiner’s proposed
combination of Colvin and Gertel appears to be premised on
impermissible hindsight reasoning.
As the other references applied in the second and third
stated rejections have not been relied upon by the examiner in a
manner that makes up for the deficiency in the first stated
rejection, it is our view that the examiner has not carried the
burden of establishing a prima facie case of obviousness with
respect to the subject matter defined by the appealed claims.
Consequently, we reverse all of the stated rejections.
Other Issues
We observe that several of the appealed claims appear to
include means-plus-function language. See, e.g., the “means for
computer controlling the piston driven rods during vibration
damping” limitation of claim 14. Such limitations require
invocation of the strictures of 35 U.S.C. § 112, paragraph 6,
wherein one must look to the specification for the appropriate
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