Appeal No. 2003-0577
Application No. 09/194,378
whether to combine references must be thorough and
searching.’...It must be based on objective evidence of record.
This precedent has been reinforced in myriad decisions, and
cannot be dispensed with.”); 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 syndrome
wherein that which only the inventor taught is used against its
teacher.”).
The examiner argues that “[t]he inclusion of the word
‘also’ [at Cardinal’s page 1, line 15] implies that Cardinal
intends its film to be adhered to other substrates that do not
contain reactive groups.” (Answer, page 5.) The examiner’s
argument is not well taken, because we find no such intention in
Cardinal. The description at Cardinal’s page 1, lines 15-18
pertains to an additional property of the thermoplastic
composition. Also, as pointed out by the appellants (appeal
brief, page 6), the relied upon prior art disclosure falls far
short of suggesting or even hinting to one of ordinary skill in
the art that Cardinal’s thermoplastic film may be adhered to a
polyolefin substrate.
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