Appeal No. 2004-1600
Application No. 09/964,149
clear that the examiner’s rejection can only be based on
improper hindsight reasoning. In re Fine, 837 F.2d 1071, 1075,
5 USPQ2d 1596, 1600 (Fed. Cir. 1988) (“One cannot use hindsight
reconstruction to pick and choose among isolated disclosures in
the prior art to deprecate the claimed invention.”).
Hence, we agree with the appellant that a person of
ordinary skill in the art would not have been motivated to
combine Honeycutt and Burbridge. Honeycutt was designed to
prevent cooling gas flow exiting from between an augmentor
casing and an augmentor liner from leaking forwardly between
augmentor casing and nozzle actuating cylindrical sleeve of a
jet engine, whereas Burbridge was designed to acquire less
actuation force moving from the blade seal when a control
surface is pivoted. Hence, we reiterate that we believe that
the only guidance for so combining the applied reference
teachings is based upon impermissible hindsight derived from
appellants’ own disclosure (W.L. Gore & Assocs. v. Garlock,
Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-313 (Fed. Cir.
1983), cert. denied, 469 U.S. 851 (1984)) rather than some
teaching, suggestion or incentive derived from the prior art
(ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577,
221 USPQ 929, 933 (Fed. Cir., 1984)).
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