Appeal No. 2004-1153
Application No. 09/927,140
two members together." With regard to method claims 27 through
29, the examiner further contends that in view of the structure
resulting from combining Browning and Harley as applied to claim
1, "the method of operating the device would have been inherent
since it is the normal and logical manner in which the device
could be used" (final rejection, page 5).
Appellant argues, and we strongly agree, that the examiner's
attempted combination of the disparate subject matter of Browning
and Harley is an improper exercise in hindsight reconstruction of
the claimed invention based on appellant's 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, 1784 (Fed. Cir.
1992), that it is impermissible for the examiner to use the
claimed invention as an instruction manual or "template" in
attempting to piece together isolated disclosures and teachings
of the prior art so that the claimed invention is rendered
obvious.
In the context of the present application, we also note that
the mere fact that the applied prior art could be modified in the
manner urged by the examiner would not have made such a
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