Appeal No. 94-2995
Application 07/976,827
oxygen and moisture. Concerning these matters, we find merit in
the following viewpoint expressed by the appellants on page 2 of
the Reply Brief:
Polyvinylidene chloride is not described
in the applied art for any purpose. However,
the PTO reasons that a prima facie case has
been established on the grounds that the
undescribed polyvinylidene chloride is an
equivalent of polyvinylchloride and the
described polyvinylchloride [sic, the
undescribed polyvinylalcohol/polyvinylidene
chloride blend] would inherently function in
a way undescribed by the applied art.
. . . obviousness can not be predicated on
the unknown; findings, here under the
statute, must be based on prior art evidence.
The [examiner’s] findings of equivalency and
inherency are based on the rejected, appealed
claims, not on the applied prior art.
In essence, we consider the examiner’s obviousness
conclusion to be based upon impermissible hindsight derived from
the appellants’ own disclosure rather than a teaching, suggestion
or incentive derived from the applied prior. It follows that the
§ 103 rejection of the appealed claims as being unpatentable over
Migliorini in view of Scopp cannot be sustained.
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