Appeal No. 1998-2646
Application No. 08/685,365
teachings in the proposed manner previously discussed. This
is because the applied references do not support the
Examiner's implicit proposition that such a characteristic
would have been desirable in the ultimate compositions under
consideration or that the achievement of such a characteristic
(even if presumed to be desirable) would have been reasonably
expected to be successful. In re O'Farrell, 853 F.2d 894,
903-904, 7 USPQ2d 1673, 1680-1681 Fed Cir. 1988).
The Examiner's rationale in support of his conclusion of
obviousness contains additional infirmities as more fully
detailed in the brief. However, we see little point in
expounding upon these additional infirmities. Suffice it to
say that we share the Appellants' viewpoint that the rejection
before us is based upon impermissible hindsight derived from
the Appellants' own disclosure (W. L. Gore & Assocs. v.
Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-313
(Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984)), rather
than some teaching, suggestion or incentive derived from the
applied prior art (ACS Hospital Systems, Inc. v. Montefiore
Hospital, id.).
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