Appeal No. 1998-2257
Application 08/692,310
invention. Instead, the examiner relies upon impermissible
hindsight in view of the appellants’ disclosure to piece
together the teachings of the references so as to reach his
conclusion of obviousness. See W.L. Gore & Associates v.
Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed.
Cir. 1983), cert. denied, 469 U.S. 851 (1984); In re
Rothermel, 276 F.2d 393, 396, 125 USPQ 328, 331 (CCPA 1960).
The examiner argues that in a declaration by Dye (filed
February 5, 1996, paper no. 14), it is admitted that Rieke’s
method may produce some alloy (answer, page 6). Rieke does
not disclose the alloys recited in the appellants’ claim 32.
Even if, however, Rieke would have fairly suggested, to one of
ordinary skill in the art, using reagents which produce some
of an alloy recited in the appellants’ claim 32, the examiner
has
not established that Rieke’s method, which does not use an
electride or alkalide as a reducing agent, would produce an
alloy having characteristics shown in the appellants’ figures
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