Appeal No. 2003-1275 Page 6
Application No. 09/443,456
teachings of that reference. See In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313,
1316-17 (Fed. Cir. 2000). The fact that “the salient machining would remain unchanged
regardless of the chosen placement of the device and would be contingent upon, for
example, the desired number of machining operations to be performed upon a
particular workpiece” as stated by the examiner (Paper No. 19. page 5) is of no
moment, as this is not the test for obviousness. The test for obviousness is what the
combined teachings of the references would have suggested to one of ordinary skill in
the art. See In re Young, 927 F.2d 588, 591, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991)
and In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). In this
instance, the examiner has offered no evidence that the prior art would have suggested
to one of ordinary skill in the art at the time of appellants’ invention the arrangements
recited in claims 24 and 26. Based on the evidence before us, the only suggestion for
modifying Hashimoto in the manner proposed by the examiner is found in the luxury of
hindsight accorded one who first viewed the appellants' disclosure. This, of course, is
not a proper basis for a rejection. See In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d
1780, 1784 (Fed. Cir. 1992). The rejection of claims 24 and 26 is reversed.
The examiner has rejected claims 9 and 11-16 as being unpatentable over
Hashimoto in view of Koser. We, like appellants (brief, pages 23 and 24), find
absolutely no suggestion in Koser’s pipe bend finishing system to incorporate any of the
manipulation devices called for in these claims in Hashimoto’s system. As stated by
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