Appeal No. 2003-0771
Application No. 09/031,666
Our court of review indicated in In re Fritch, 972 F.2d
1260, 1266 n.15, 23 USPQ2d 1780, 1783-84 n.15 (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 court has also cautioned
against focusing on the obviousness of the differences between
the claimed invention and the prior art rather than on the
obviousness of the claimed invention as a whole as Section
103 requires. See, e.g., Hybritech, Inc. v. Monoclonal
Antibodies, Inc., 802 F.2d 1367, 1383, 231 USPQ 81, 93 (Fed. Cir.
1986), cert. denied, 480 USPQ 947 (1987). In the present
instance, we think that the examiner has lost sight of the
claimed invention as a whole and has improperly focused upon the
supposed obviousness of the differences between the claimed
invention and the prior art cited against the claims. In
particular, we share appellants’ view as expressed on page 15 of
the brief that the examiner’s reliance on the individual
characteristics of nozzles, fire hoses, and pumps broadly set
forth in the background section of the Williams specification is
misplaced. Like appellants, we consider that there is no basis
for concluding that characteristics for fire hoses, as per
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