Appeal No. 2003-0401
Application 09/490,954
combining the teachings of the references so as to arrive at the
appellants’ claimed invention comes from the appellants’
disclosure of their invention rather than coming from the applied
prior art and that, therefore, the examiner used impermissible
hindsight when rejecting the claims. 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).
For the above reasons we conclude that the examiner has not
carried the burden of establishing a prima facie case of
obviousness of the appellants’ claimed invention.
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