Appeal No. 2003-1937
Application No. 09/522,296
combine selected portions of the applied references to Take,
Helmstetter and Drajan, and/or broad concepts contained therein,
with the distinctly different golf club head arrangement shown in
Mockridge in an effort to arrive at appellants' claimed subject
matter. In that regard, we note, as our court of review
indicated in In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780,
1784 (Fed. Cir. 1992), that 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).
Regarding the examiner's attempt to dispose of appellants'
claimed subject matter as being obvious because it has been held
to be within the level of one of ordinary skill in the art to
make integral that which has heretofore been made in separate
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