Appeal No. 1996-1784
Application 08/131,037
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 examiner does not explain why, regardless of the
differences between the Martens process and that of Yada and
Bartissol as discussed above, one of
ordinary skill in the art would have combined the teachings of
the references so as to arrive at appellants’ claimed process.
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 Fritch, 972 F.2d 1260, 1266,
23 USPQ2d 1780, 1783 (Fed. Cir. 1992).
The motivation relied upon by the examiner for combining
the references so as to produce appellants’ claimed invention
comes solely from the description of appellants’ invention in
their specification. Thus, 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), cert. denied, 469 U.S. 851
(1984); In re Rothermel, 276 F.2d 393, 396, 125 USPQ 328, 331
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