Appeal No. 2004-1520 Page 4
Application No. 09/957,058
of claim 1 except that it does not have one or more front eccentric wheels as claimed
(Answer, pp. 4-5).1 We also agree with the Examiner’s conclusions of obviousness
(Answer, pp. 5 and 7). These conclusions are based on the conventional nature of
providing one or two front wheels in combination with larger rear wheels to provide
increased maneuverability (Id.). Berfield and Howard, as applied by the Examiner,
provide the required evidence of obviousness.
Appellant argues that the Examiner has used hindsight reconstruction in
fashioning the rejections (Brief, pp. 9-10). In making this argument, Appellant alleges
that the Examiner has disregarded portions of Berfield and Howard that teach away from
the invention and that, instead, the Examiner is picking and choosing individual features
from the references and lumping them together to yield the features of the claimed
invention (Brief, pp. 9-11 and 14).
We agree that it is improper for an examiner to rely upon an appellant’s
disclosure of invention in the determination of obviousness. In order to guard against
such an impermissible reconstruction, a finding of a reason, suggestion or motivation to
modify the teaching of the primary reference must be located and that reason, suggestion
or motivation must originate in the prior art. This is not to say that the references must
fit together like pieces of a puzzle or that the secondary reference cannot include a
1Claim 1 requires one eccentric wheel. Claims 5 and 6, which are dependent on claim 4
which is, in turn, dependent on claim 1, require two eccentric front wheels.
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