Ex parte HIYOSHI et al. - Page 4




          Appeal No. 96-2726                                                          
          Application 08/005,401                                                      


          impress wet fibrous material, fail to teach or suggest making               
          watermark paper.  Edge, who places the fabric pattern on felts,             
          not the claimed cylinder mold or dandy roll, relates to                     
          manufacturing relatively thick sheet material such as wall boards           
          or insulating boards.  Similarly, Izard, who fails to disclose              
          the claimed step of fixing a fibrous pattern to a cylinder mold             
          or a dandy roll, teaches the production of fiber board.                     
               In our view, the only teaching of using lace made from                 
          natural or synthetic fiber to manufacture watermark paper                   
          emanates from appellants’ specification which, of course, cannot            
          be relied upon to establish obviousness under 35 U.S.C. § 103.              
          In our opinion, the examiner has resorted to impermissible                  
          hindsight in concluding that the claimed method would have been             
          obvious to one of ordinary skill in the art.                                
               In conclusion, based on the foregoing, the examiner’s                  
          decision rejecting the appealed claims is reversed.                         
                                      REVERSED                                        


                         EDWARD C. KIMLIN              )                              
                         Administrative Patent Judge   )                              
                                                       )                              
                                                       )                              
                                                       )                              
                         CHARLES F. WARREN             ) BOARD OF PATENT              
                         Administrative Patent Judge   )   APPEALS AND                
                                                       )  INTERFERENCES               
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