Appeal No. 2002-1002
Application No. 08/820,506
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). In order to
establish a prima facie case of obviousness, the examiner must
identify a showing of suggestion or motivation to modify the
teachings of the references to achieve the claimed invention.
In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1316-17 (Fed.
Cir. 2000). While the suggestion or motivation to modify may be
implicit from the prior art rather than expressly stated, the
examiner must still provide reasons for finding a limitation to
be taught or suggested in the references. Id.
As pointed out by appellant, the examiner has failed to
identify (see Reply brief, page 3, third paragraph) and we do not
find any disclosure in McCord relating to an attachment
structure. Rather, it is readily apparent that the examiner’s
conclusion that it would have been obvious to have incorporated
an attachment structure into McCord’s nonwoven material can only
be based upon improper hindsight reasoning. See W. L. Gore &
Assoc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-
13 (Fed. Cir. 1983). (“To imbue one of ordinary skill in the art
with knowledge of the invention in suit, when no prior art
reference or references of record convey or suggest that
knowledge, is to fall victim to the insidious effect of a
hindsight syndrom wherein only that which the inventor taught is
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