Appeal No. 2005-1331 5
Application No. 10/215,414
heating blanket disclosed in Yoshio (Fig. 1) in the manner proposed in the rejection
(based on Balboni) is the result of impermissible hindsight derived from first having read
appellants’ disclosure and claims, and amounts to an improper reconstruction of
appellants’ claimed invention using appellants’ own disclosure as a roadmap for
selectively combining the applied prior art references. As our court of review indicated
in In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992), it is
impermissible to use the claimed invention as an instruction manual or "template" in
attempting to piece together isolated disclosures and teachings of the prior art so that
the claimed invention is rendered obvious. Thus, the examiner’s rejection of claims 1,
2, 6, 7, 9 through 12, 14, 16, 17, 19, 21, 22 and 24 under 35 U.S.C. § 103(a) as being
unpatentable over Yoshio in view of Balboni will not be sustained.
We have additionally reviewed the patents to Shomphe and Krackow applied by
the examiner in rejections of dependent claims 8 and 20, and claims 3 and 18,
respectively, under 35 U.S.C. § 103(a). However, we find nothing in those patents
which would overcome or provide for the teaching/suggestion we have found lacking in
the basic combination of Yoshio and Balboni. Accordingly, the examiner’s rejections of
dependent claims 3, 8, 18 and 20 under 35 U.S.C. § 103(a) will likewise not be
sustained.
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