Appeal No. 2006-1815
Application No. 10/178,767
examiner is using the hindsight benefit of appellant’s own disclosure to combine
the two angularly spaced pins of Higginbotham, used with a circular thrust bearing
(50) of a rotating screen bowl centrifugal, with the fuel injection pump of
Shinohara.
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 the patentability of a claimed invention which
relies on the combination of two known elements, the question to be answered is
whether there is something in the prior art as a whole to suggest the desirability,
and thus the obviousness, of making the combination. In this case, we find that
there is simply nothing in the disparate teachings of the applied prior art patents
which would have indicated a desirability for their combination and thus have led
one of ordinary skill in the art at the time of appellant’s invention to such a
combination. Because Shinohara does not teach or suggest that there is a gap
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