Appeal No. 96-1823
Application No. 08/187,521
Furthermore, while the epoxy resin and microballoon mixture is
known as taught by Okumoto, this by itself or in combination with
Bills and Fry is not sufficient, in our opinion, to render
obvious either of the limitations mentioned above. That is, we
see no motivation of why one skilled in the art would have used
Okumoto's mixture to break the hollow interior of Bills' shaft
into distinct cells to disrupt the pressure waves instead of the
foam taught by Bills. Thus, it appears to us that the examiner2
has engaged in a hindsight reconstruction of the claimed
invention. This, of course, is impermissible. Since all the 3
limitations of independent claims 1 and 5 are not taught or
suggested by the applied prior art, the examiner has failed to
meet the initial burden of presenting a prima facie case of
obviousness. Thus, we cannot sustain the examiner's rejection4
of appealed claims 1 and 5, or claims 2 through 4 and 6 which
2Bills teaches (column 2, lines 12-21) that a very small
quantity of foamed plastic material is included in the hollow
interior of the shaft to break the interior of the shaft into
distinct cells or pockets to disrupt pressure waves that tend to
develop in the air cavity within the shaft.
3 In re Fine, supra; In re Warner, supra.
4Note In re Rijckaert, supra; In re Lintner, supra; and In
re Fine, supra.
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