Appeal No. 1999-0112 Page 10
Application No. 08/693,614
suggested by the examiner to arrive at the claimed subject
matter and we can only conclude that the examiner's
determination, in this regard, is based on impermissible
hindsight.3
Accordingly, we will not sustain the examiner's rejection
of claims 5 and 9 under 35 U.S.C. § 103 as being unpatentable
over Roehrl in view of Staehle.
Claims 6 through 8 depend from claim 5 and the examiner's
rejection of claims 6 through 8 will not be sustained for the
same reasons as stated above with respect to claim 5.
CONCLUSION
3 Obviousness may not be established using hindsight or in view of the
teachings or suggestions of the inventor. See Para-Ordnance Mfg. v. SGS
Importers Int'l, 73 F.3d 1085, 1087, 37 USPQ 2d 1237, 1239 (Fed. Cir. 1995)
(citing W. L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1551,
1553, 220 USPQ 303, 311, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
(1984)).
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