Appeal No. 2003-1778 Page 10
Application No. 08/988,292
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 Lerner and
Gerstel appears to be premised on impermissible hindsight
reasoning. Thus, we will not sustain the stated § 103(a)
rejection.
CONCLUSION
The decision of the examiner to reject claims 1-5, 10, 11,
14, 15, 18-20, 28 and 29 under 35 U.S.C. § 102(b) as being
anticipated by Lerner and to reject claims 1, 8, 10, 11 and 18-21
under 35 U.S.C. § 102(b) as being anticipated by Kellett is
affirmed. The decision of the examiner to reject claim 12 under
35 U.S.C. § 103(a) as being unpatentable over Lerner in view of
Gerstel is reversed.
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