Appeal No. 2004-0119
Application 08/644,170
in a single jaw closing operation, we see no teaching, suggestion
or motivation in the remaining references applied by the examiner
which would have led one of ordinary skill in the art to then
consider forming the crimping tool of Mino from a relatively soft
metal like aluminum, thereby creating a problem situation which
would subsequently also require a dense anodic coating to be
applied on the outer surfaces of the aluminum tool to enhance
wear properties thereof. As urged by appellants in their brief
and reply brief, none of the references applied by the examiner
would have led one of ordinary skill in the art at the time of
appellants’ invention to make a tool with wear susceptible
elements like those in the crimper of Mino out of aluminum.
Instead, it appears that the prior art would have led the
ordinarily skilled worker to use a known hard material, such as
steel, for such a tool, or at least for the wear susceptible
elements thereof.
In our view, the examiner’s position in this appeal
represents a clear case of impermissible hindsight reconstruction
of the claimed invention based on appellants’ own teachings. In
that regard, we note, as our court of review indicated in
In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783 (Fed.
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007