Appeal No. 95-4678
Application 08/097,572
which are not met by Duncan, and which arguably would be met or
suggested only if Duncan were modified in view of Shine in the
manner proposed by the examiner. As indicated above, however,
the only suggestion for combining these references in such a
manner stems from hindsight knowledge impermissibly derived from
the appellants’ own disclosure. Thus, the combined teachings of
Duncan and Shine fail to establish a prima facie case of
obviousness with respect to the subject matter recited in claims
2, 7, 8, 14, 15, 18 through 22 and 28 through 31.
In summary, the decision of the examiner to reject claims 1
through 9, 14 through 22 and 28 through 31 under 35 U.S.C. § 103
is affirmed with respect to claims 1, 3 through 6, 9, 16 and 17,
and reversed with respect to claims 2, 7, 8, 14, 15, 18 through
22 and 28 through 31. Since the basic thrust of our affirmance
of the rejection of claims 1, 3 through 6, 9, 16 and 17 differs
from that advanced by the examiner in support of this rejection,
we hereby designate the affirmance to be a new ground of
rejection pursuant to 37 CFR § 1.196(b) in order to provide the
appellants with a fair opportunity to react thereto (see In re
Kronig, 539 F.2d 1300, 1302-03, 190 USPQ 425, 426-27 (CCPA
1976)).
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