Ex Parte Warkentin - Page 5




          Appeal No. 09/938,479                                      Page 5           
          Application No. 2003-2047                                                   


          against employing hindsight by using the appellant’s 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           
          Louis and Rodgers appears to be premised on impermissible                   
          hindsight reasoning.  In this regard, the examiner has not fairly           
          established that one of ordinary skill in the art of designing              
          and building chart recorders of the type described in Louis would           
          have found in the teachings of Rodgers concerning low cost                  
          application digitizers for monitoring the position of a pen or              
          other instrument relative to a grid, a suggestion for modifying             
          the chart recorder of Louis in the manner proposed by the                   
          examiner.                                                                   
               On the record of this appeal, 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 the stated                   
          rejection.                                                                  











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