Appeal No. 96-2625
Application 08/329,536
transfer the label to a second surface.
It is clear that the motivation relied upon by the
examiner for combining the teachings of the references so as
to arrive at 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 & Assocs.
v. Garlock, Inc., 721 F.d. 1540, 1553, 220 USPQ 303, 312-13
(Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984); In re
Rothermel, 276 F.d. 393, 396, 125 USPQ 328, 331 (CCPA 1960).
Accordingly, we reverse the rejection of claim 8 over
Heatwole and VanErmen. The additional references applied to
dependent claims 9-12 are not relied upon for teachings which
could remedy the above-described deficiencies in Heatwole and
VanErmen as to the rejection of independent claim 8 from which
claims 9-12 depend. Consequently, we also reverse the
rejections of claims 9-12.
DECISION
The rejections under 35 U.S.C. § 103 of claim 8 over
-9-9
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