Appeal No. 1996-2769
Application 08/270,089
and a precursor metal is in the appellant’s specification. In addition, the only place where
we find a suggestion to convert the referenced spherical rare earth oxide compound to the
corresponding oxysulfide at a temperature no greater than 900EC is in the appellant’s
specification. The flaw in the examiner’s reasoning is apparent from the outset when she
begins with two references (Royce and Hewes) which, at best, only suggest step (e) of the
claimed method. Neither Royce nor Hewes teaches the requisite steps for making
spherical particles of less than one micron in size which comprise an oxide of a rare earth
phosphor and precursor metal. Thus, since the references do not teach or suggest the
required starting material, the disclosed methods of converting rare earth oxides to
oxysulfides, even if performed at a temperature not greater than 900EC, will never result in
the production of the claimed product. By beginning with references which only disclose a
process similar to the final step of the appellant’s method, in this case, the only way the
examiner can “piece together” a rejection is by using the appellant’s specification as a
template and selecting additional references to fill the gaps. Thus, we agree with the
appellant that the examiner has relied on impermissible hindsight in making her
determination of obviousness. In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780,
1784 (Fed. Cir. 1992)(“It is impermissible to engage in hindsight reconstruction of the
claimed invention, using the applicant’s structure as a template and selecting elements
from references to fill the gaps”); Interconnect Planning Corp. v. Feil, 774 F.2d 1132,
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