Appeal No. 94-3846
Application 07/891,376
step of treating his polymer agglomerates with an organic liquid. While the examiner
acknowledges that “[t]he reference is silent regarding the resultant rendering of the
polymer surface hydrophilic, . . . [he contends that Yasui’s treatment] would be
presumed to yield the same results [as appellants’ claimed step]” (Answer, page 4).
According to the examiner, this is because “[a]mong the list of treatment liquids
[disclosed by Yasui] are alcohols and polyhydric alcohols (polyols), . . . [and such]
alcohols constitute a preferred embodiment of the claimed hydrophilic material”
(Answer, page 4).
In essence, it is the examiner’s position that the here claimed step of coating
with a hydrophilic material would be inherently practiced by patentee’s step of treating
his agglomerates with organic liquids if alcohols and polyhydric alcohols are selected
for use as such liquids. Particularly since Yasui contains no disclosure of the
hydrophilic feature of the appealed claims, it is apparent to us that the examiner has
formulated this aspect of his rejection using the appellants’ own disclosure as a guide
based upon a retrospective view of inherency by urging that at least some of patentee’s
organic liquids constitute hydrophilic materials and therefore would inherently render
the polymer surface hydrophilic. W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d
1540, 1553, 220 USPQ 303, 312-313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
(1984) (impermissible hindsight arises where that which only the inventor has taught is
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