Appeal No. 95-4439
Application No. 08/063,652
4, line 45 of Blumbergs, illustrating the 8-step sequence. In
our judgment, the examiner has impermissibly engaged in a
hindsight reconstruction of the claimed invention, using
appellants' specification as a blueprint or guide and
selecting elements from these disparate references in a
piecemeal manner. This the examiner cannot do. See In re
Gorman, 933 F.2d 982, 986,
18 USPQ2d 1885, 1888 (Fed. Cir. 1991). We believe that the
proposed modification of Kim's trimethylsilyl products, by
replacing 2-(hydrogen, amino, or mercapto) with the 2-fluoro
group taught by Eaton or Blumbergs, constitutes the
impermissible use of hindsight.
The examiner's decision is reversed.
REVERSED
SHERMAN D. WINTERS )
Administrative Patent Judge )
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ADRIENE LEPIANE HANLON ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
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