Appeal No. 95-4115 Page 7
Application No. 07/932,714
the disclosure of appellant’s method in his specification
rather than from the prior art. Accordingly, we agree with
appellant that the applied prior art, even if properly
combinable, would not have rendered the specifically claimed
process herein prima facie obvious without the impermissible
use of hindsight reasoning. 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). For the above reasons, we find that the
examiner has not set forth a factual basis which is sufficient
to support a conclusion of obviousness of appellant's claimed
invention.
CONCLUSION
To summarize, the decisions of the examiner to reject
claims 12-16 under 35 U.S.C. § 103 as unpatentable over
Okamoto in view of Morrison, and to reject claims 12-16 under
35 U.S.C. § 103 as unpatentable over Okamoto in view of JP-
1236544 as admitted by appellant on pages 6 and 7 of
specification are reversed. No time period for taking
any subsequent action in connection with this appeal may be
extended under 37 37 CFR §
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