Appeal No 94-2912
Application 07/752,831
Appellants’ Brief on Appeal, and the Examiner’s Answer.
Having considered and weighed all the evidence of record
favoring patentability and all evidence to the contrary, we
conclude that the inventions appellants claim are patentable
over the cited prior art and reverse the examiner’s rejection
of all pending claims under 35 U.S.C. § 103.
In our view, the examiner’s rejection of Claims 1, 23,
31-33 and 39-41 for obviousness under 35 U.S.C. § 103 results
from an impermissible hindsight reconstruction of the claimed
invention. See In re Gorman, 933 F.2d 982, 987, 18 USPQ2d
1885, 1888 (Fed. Cir. 1991):
It is impermissible . . . simply to engage in a
hindsight reconstruction of the claimed invention,
using the applicant’s [invention] . . . as a template
and selecting elements from references to fill the gaps.
Whether or not we agree with appellants or the examiner
that the specification’s examples and the Declaration of David
W. Pehrson show unexpected results for the full scope of the
subject matter claimed, is immaterial. We hold that the
examiner has not established a prima facie case of obviousness
for the subject matter claimed in view of the combined prior
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