Appeal No. 1997-3532
Application 08/411,385
layers specified in the appealed claims or to use the methods specified in the claims to deposit the
layers. There is no doubt that each of the layers and the methods of depositing the same had been used
in this art and thus could be used to modify the layers and methods in the process of Yamaha, but this
fact alone is not enough to justify combining the references. See, e.g., In re Fritch, 972 F.2d 1260,
1266, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992). Indeed, even if there was motivation to combine the
teachings of these references, the same would not have suggested or taught the sequence of layers
specified in the appealed claims and thus it is inescapable that the references as combined by the
examiner, taken as a whole, would not have resulted in the claimed method. Uniroyal, Inc. v. Rudkin-
Wiley Corp., 837 F.2d 1044, 1050-54, 5 USPQ2d 1434, 1438-41 (Fed. Cir. 1988).
Accordingly, it is manifest from this record that the examiner has used hindsight gained from
appellant’s specification and claims in reaching his conclusion of obviousness. See, e.g., Fine, supra;
Dow Chem., 837 F.2d at 473, 5 USPQ2d at 1531-32.
The examiner’s decision is reversed.
Reversed
CHUNG K. PAK )
Administrative Patent Judge )
)
)
)
CHARLES F. WARREN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
ROMULO H. DELMENDO )
Administrative Patent Judge )
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