Appeal No. 1996-1045
Application No. 08/143,415
However, the examiner has failed to point out and we fail to find where Yukawa discloses or suggests
use of the specific pigment (d), i.e., C.I. Pigment Red 144, required by the claimed invention. The
examiner has not established on this record either that C.I. Pigment Red 144 was generally known to
be used in polyolefin compositions, such those described by Yukawa, or that any pigment might be
used in the polyolefin composition of Yukawa. Thus, the examiner has failed to explain what would
have motivated the skilled artisan to use C.I. Pigment Red 144 in the composition of Yukawa. Rather,
the only place we find such suggestion is in the appellant’s specification. Thus, we find that the
examiner has relied on impermissible hindsight in making his determination of obviousness. In re
Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992) (“It is impermissible to
engage in hindsight reconstruction of the claimed invention, using the applicant’s structure as a template
and selecting elements from references to fill the gaps.). Therefore, we conclude that the examiner has
not established a prima facie case of obviousness as to claims 3-10, which all require the specific
pigment C.I. Pigment Red 144.
Having concluded that the examiner has not established a prima facie case of obviousness, we
do not reach the rebuttal evidence of unexpected results discussed on pages 5-8 of the amended brief.
CONCLUSION
To summarize, the decision of the examiner to reject claims 3 through 10 under 35 U.S.C. §
103 as unpatentable over Yukawa is reversed.
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