Appeal No. 1999-0194
Application No. 08/436,626
takes the position, however, that it would have been obvious
to one of ordinary skill in the art to include such a material
in order to dampen vibrations and/or to prevent water, salt
and other corrosive materials from coming between the
diaphragm and the I-beam (answer, page 5).
A rejection based on § 103 clearly must rest on a factual
basis, and these facts must be interpreted without hindsight
reconstruction of the invention from the prior art. In re
Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967),
quoted in In re GPAC, Inc., 57 F.3d 1573, 1582, 35 USPQ2d
1116, 1123 (Fed. Cir. 1995). In the present case, there is no
evidence to support the examiner’s position that it would have
been obvious to provide a pliable material in the subject
matter in public use and/or on sale at the specific location
called for in the claim. Rather, the examiner’s statement of
obviousness appears to be based on impermissible hindsight
gleaned from
appellant’s own disclosure, rather than from the applied prior
art. Under these circumstances, the standing § 103 rejections
of claim 15 are not sustainable.
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