Appeal No. 2005-1577
Application No. 09/581,159 Page 14
connector required by Winter. In this regard, the examiner has
not established that one of ordinary skill in the art would view
the antenna connector of Winter as requiring any correction or
modification.
While the glazing systems of Shukuri and Marquardt use
grinding for disparate reasons to aid in the formation of a
vehicle window, that fact, by itself, does not serve to establish
that one of ordinary skill in the art would have been led to
employ such grinding in forming Winter’s antenna device in a
fashion so as to arrive at the here claimed subject matter based
on the combined teachings of the references. The mere fact that
the 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.
Rejections based on § 103(a) must rest on a factual basis
with these facts being interpreted without hindsight
reconstruction of the invention from the prior art. See In re
Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177 (CCPA 1967), cert.
denied, 389 U.S. 1057 (1968). 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
Page: Previous 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 Next
Last modified: November 3, 2007