Appeal No. 95-3208
Application 08/067,307
However, we fail to find that the Appellants' statement is an
admission of what is known in the prior art, but instead is a
disclosure of Appellants' invention. "Obviousness may not be
established using hindsight or in view of the teachings or
suggestions of the inventor." Para-Ordnance Mfg. v. SGS
Importers Int’l, 73 F.3d at 1087, 37 USPQ2d at 1239, citing W. L.
Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d at 1551, 1553,
220 USPQ at 311, 312-13.
We are not inclined to dispense with proof by evidence when
the proposition at issue is not supported by a teaching in a
prior art reference or by common knowledge of unquestionable
demonstration. Our reviewing court requires this evidence in
order to establish a prima facie case. In re Knapp-Monarch Co.,
296 F.2d 230, 232, 132 USPQ 6, 8 (CCPA 1961); In re Cofer, 354
F.2d 664, 668, 148 USPQ 268, 271-72 (CCPA 1966). Therefore, we
will not sustain the Examiner's rejection of claims 2 and 6.
We note that the Appellants have not argued claims 3, 4, 5
and 7. After a careful review of the cited art and the
Examiner's reasoning presented in the answer, we will sustain the
Examiner's rejection of these claims.
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