Appeal No. 93-3623 Page 19
Application 07/629,690
testimony, in some circumstances, may even be counted against the
inventor. Borror v. Herz, 666 F.2d 569, 573-74, 213 USPQ 19, 23
(CCPA 1981).
4. Appellant's "opinion" concluding that omission of the
seals from Hrdina would not, by itself, have rendered the claims
1-12 (and presumably 13-15 and 21-25) obvious, is not a proper
use of fact testimony. E.g., In re Buchner, 929 F.2d 660, 661,
18 USPQ2d 1331, 1332 (Fed. Cir. 1991) (dismissing unsupported
"expert opinion" on an ultimate issue).
5. Appellant's analysis of the separate deficiencies of
each reference (see, e.g., the preceding paragraph) and the
admitted prior art is not proper approach to contesting an
obviousness rejection involving a combination of references.
In re Merck & Co., 800 F.2d 1091, 1097, 231 USPQ 375, 380 (Fed.
Cir. 1986).
6. The examiner must be careful in relying on ordinary
skill in the art to arrive at specific limitations in the absence
of some teaching or suggestion at least implicit in the art of
record. Otherwise, as with claims 9-15, 19 and 20, the rejection
will appear to depend on improper hindsight. W.L. Gore & Assocs.
v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed.
Cir. 1983).
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