Appeal No. 2004-1881
Application No. 09/623,681
teachings of Thomas to modify the method of AAPA (appellants argue
that motivation for the proposed modification does not exist), it
seems to us that a fair reading of what Thomas would have suggested
to the ordinarily skilled artisan is that if a preformed shim
material is to be employed in the method of AAPA, the outer layer
should be assembled to the sub-structure prior to curing the shim
material. This, of course, would not result in the method of claim
1.
Where prior art references require a selective combination to
render obvious a claimed invention, there must be some reason for
the combination other than hindsight gleaned from appellants’ own
disclosure, Interconnect Planning Corp. v. Feil, 774 F.2d 1132,
1143, 227 USPQ 543, 551 (Fed. Cir. 1985). In the fact situation
before us, we are unable to agree with the examiner’s position to
the effect that one of ordinary skill in the art would have been
motivated by the combined teachings of the applied prior art
references to utilize the preformed shim material in the method of
AAPA while at the same time ignoring Thomas’ order of steps in
order to arrive at the method of claim 1.
In light of the foregoing, we shall not sustain the standing
rejection of the appealed claims as being unpatentable over AAPA in
view of Thomas.
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