Appeal No. 2006-0320
Application No. 10/293,833
analysis, it is our view that the examiner is using the hindsight
benefit of appellant’s own disclosure to combine the non-metallic
needle valve assemblies shown and described in Martin and Gibson,
where they are used for inflating footballs, basketballs and
soccer balls having an operating pressure in the range of about
3 psi, with the clearly distinct field of vehicle shock absorbers
of the type described in the AAPA, where significantly higher
pressures would be involved.
From our perspective, the examiner has merely used
appellant’s claimed invention as an instruction manual or
"template" in an attempt to piece together disparate teachings of
the prior art so that the claimed invention is rendered obvious.
This approach to a determination of obviousness is improper and
cannot be sanctioned by this Board. See In re Gorman, 933 F.2d
982, 987, 18 USPQ2d 1885, 1888 (Fed Cir. 1991) and Interconnect
Planning Corp. v. Feil, 774 F.2d 1132, 1138, 227 USPQ 543, 547
(Fed. Cir. 1985).
In formulating the rejection on appeal, the examiner
appears to have lost sight of the fact that when determining
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