Appeal No. 1996-2853
Application 08/375,272
The Examiner has not alleged the resins of Arakawa to be
cured resins. On the other hand, Appellants have stated that
Arakawa’s resins are not cured resins. We must therefore
assume that Arakawa’s resins are not cured. Thus we must
decide whether the Examiner has shown the use of cured resins
to be obvious. The Federal Circuit states that "[t]he 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." In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d
1780, 1783-84 (Fed. Cir. 1992), citing In re Gordon, 733 F.2d
900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). "Obviousness
may not be established using hindsight or
in view of the teachings or suggestions of the inventor."
Para-Ordnance Mfg. v. SGS Importers Int’l, 73 F.3d at 1087,
37 USPQ2d at 1239, citing W. L. Gore & Assocs., Inc. v.
Garlock, Inc., 721 F.2d at 1551, 1553, 220 USPQ at 311, 312-
13. We find that the Examiner has not shown the use of a
cured resin to be obvious, and we will not sustain the
rejection of claims 21, 24 and 27 on this ground.
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