Appeal No. 2005-1115
Application 09/269,369
agitator. See In re Ratti, 270 F.2d 810, 813, 123 USPQ 349, 352
(CCPA 1959). Also see the Manual of Patent Examining Procedure,
§ 2143.01 (Eighth Edition, Rev. 2, May 2004). In essence, this
point corresponds to our discussion above. That is, the
examiner’s proposed modification departs from Jackson’s principle
of operation to such an extent that it is questionable whether
the resulting apparatus would be capable of achieving Jackson’s
disclosed objectives and desiderata.
In light of the foregoing, it is our determination that
the examiner’s obviousness conclusion is based upon impermissible
hindsight derived from the appellant’s own specification rather
than some teaching, suggestion or motivation derived from the
prior art. With this is mind, we emphasize that the best defense
against the subtle but powerful attraction of a hindsight-based
obviousness analysis is rigorous application of the requirement
for a showing of a teaching or motivation to combine prior art
references. In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614,
1617 (Fed. Cir. 1999). This requirement for such a showing is
not satisfied by the Jackson and Kinsey references.
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007