Appeal No. 96-0353
Application 08/099,220
art itself must appear to have suggested the claimed subject
matter to one of ordinary skill in the art. See In re
Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA 1976).
The mere fact that the prior art could be modified as proposed
by the examiner is not sufficient to establish a prima facie
case of obviousness. See In re Fritsch, 972 F.2d 1260, 1266,
23 USPQ2d 1780, 1783 (Fed. Cir. 1992).
Because the motivation relied upon by the examiner comes
solely from appellant’s specification, the examiner used
impermissible hindsight when rejecting the claims. See W.L.
Gore & Associates v. Garlock, Inc., 721 F.2d 1540, 1553, 220
USPQ 303, 312-13 (Fed. Cir. 1983); In re Rothermel, 276 F.2d
393, 396, 125 USPQ 328, 331 (CCPA 1960). We therefore do not
sustain the examiner’s rejection.
DECISION
The rejection of claims 7-13 under 35 U.S.C. § 103 over
Griffith in view of Stilling is reversed.
REVERSED
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