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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