Appeal No. 2004-1908
Application No. 09/176,374 Page 9
we could agree with the examiner that the combination of Takeuchi
with Machida would have suggested using a rectangular mandrel in
Machida, which we do not, the examiner has not fairly explained
how that combination of references would have taught or suggested
the particular folding steps of appellant’s claim 1 together with
the claim 1 requirement that “only portions of the longer one of
the electrode[s] can contact each other” (claim 1, step d) after
removal of the mandrel and in the event of impairment of a
portion of the separator that was contacted by the mandrel.
In this regard, appellant’s specification cannot be used as
an instruction manual or template to piece together the teachings
of the prior art so that the claimed invention is rendered
obvious. See In re Fritch, 972 F.2d 1260, 23 USPQ2d 1780 (Fed.
Cir. 1992).
For the foregoing reasons, it is our determination that the
examiner has not established a prima facie case of obviousness.
Accordingly, we will not sustain the § 103(a) rejection before
us.
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