Appeal No. 2005-1458
Application No. 09/732,799 Page 6
to be addressed in forming the diamond product of Tsuji by a
temperature difference method.
It is well settled that the mere fact that prior art may be
modified to reflect features of the claimed invention does not
make the modification obvious unless the desirability of such
modification is suggested by the prior art. Our reviewing court
has repeatedly cautioned against employing hindsight by using the
appellants’ disclosure as a blueprint to reconstruct the claimed
invention from the isolated teachings of the prior art. See,
e.g., Grain Processing Corp. v. American Maize-Products Co., 840
F.2d 902, 907, 5 USPQ2d 1788, 1792 (Fed. Cir. 1988). From our
perspective, the examiner’s proposed combination of the applied
references appears to be premised on impermissible hindsight
reasoning.
Because the examiner has not presented a prima facie case of
obviousness, it follows that we will reverse the examiner’s
obviousness rejection of method claims 18, 19 and 21.
Our disposition of the examiner’s obviousness rejection of
product claim 17 is another matter. Product claim 17 is not
limited by the process by which it is made. Here, appellants
acknowledge that Anthony discloses an isotopically pure diamond
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