Appeal No. 2005-1396
Application 09/739,990
Appellants argue, and we strongly agree, that the examiner
has merely asserted that the combination of Chou (‘123),
Netherlands (‘359) and Taiwanese (‘687) would have been obvious
to one of ordinary skill in the art at the time the invention was
made, and has not set forth adequate reasoning or motivation for
the wholesale changes proposed in the electric sealer of Chou
(‘123). Like appellants, it appears to us that it is only by
looking to the disclosure of the present application, and thus
relying on impermissible hindsight, that one of ordinary skill in
the art would have been led to the particular changes in Chou
(‘123) urged by the examiner. As our court of review indicated
in In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783 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.
Moreover, even assuming for argument sake that the
combination of Chou (‘123), Netherlands (‘359) and Taiwanese
(‘687) as urged by the examiner were to be made, we agree with
appellants’ assessment in the supplemental reply brief (pages
5-6) concerning the examiner’s further contention that it would
have been obvious to one of ordinary skill in the art to
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