Appeal 2006-3124
Application 10/251,179
Although the Examiner offers reasons for combining the applied prior
art, we do not find his explanation sufficient to meet the requirement for a
showing of a “teaching or motivation to combine” the prior art references.
See Dembiczak, 175 F.3d at 999, 50 USPQ2d at 1617. In particular, the
Examiner fails to explain why one of ordinary skill in the art would have been
motivated to modify a lifting mechanism such as that of Koike and Fukuyama
based on Tanaka’s device, which has a different structure and function.
Moreover, as noted above, the Examiner has not identified the prior art
teaching, suggestion, or motivation to disassemble Tanaka’s stage 24 so as to
provide the claimed “coupling ring having a first ring rotatable with respect to
a second ring.” See In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780,
1783-74 (Fed. Cir. 1992) (“The mere fact that the prior art may be modified in
the manner suggested by the Examiner does not make the modification
obvious unless the prior art suggested the desirability of the modification.”).
When the Examiner does not explain the motivation, or the suggestion or
teaching that would have led the skilled artisan at the time of the invention to
the claimed combination as a whole, there is an inference that the Examiner
relied on hindsight to conclude that the invention was obvious. In re Lee,
277 F.3d 1338, 1343, 61 USPQ2d 1430, 1433 (Fed. Cir. 2002). See In re
Fine, 837 F.2d 1071, 1075, 5 USPQ2d 1596, 1600 (Fed.Cir.1988) ("One
cannot use hindsight reconstruction to pick and choose among isolated
disclosures in the prior art to deprecate the claimed invention.").
In view of the foregoing, we reverse the rejection of claims 1-7 and 13-
17 as unpatentable over AAPA in view of Koike and Tanaka and the rejection
of claims 1-7 and 15-17 as unpatentable over AAPA in view of Fukuyama and
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