Appeal No. 1996-2811
Application 08/402,670
Like appellants (brief, pages 4-9), we find the
examiner’s rejection of claims 1 through 18 on appeal based on
Ghosh ‘282 or
Chatterjee ‘332 or ‘913 in view of Yoshida to be improper. In
the first place, we note that appellants are claiming a
particular structure (i.e., a guide rail for guiding
photographic film and paper without adverse affect on said
film and paper), not merely a composition of matter as the
examiner seems to believe in the first quoted portion of the
answer above. Thus, we consider the examiner’s reliance on
Titanium Metals Corp. v. Banner (answer, page 4) to be wholly
inapposite. As for the examiner’s proposed combination of
Yoshida and Ghosh ‘282 or Chatterjee ‘332 or ‘913, we view the
examiner’s conclusion that it would have been merely an
obvious matter of design choice for one of ordinary skill in
the art to select the specific zirconium-based ceramic
materials of the secondary references for use in the bearing
guide rails (14, 15, 20 21) of Yoshida, to be rooted in
speculation and conjecture, and based on improper hindsight
afforded by first having read appellants’ disclosure in the
present application, or at the very least, to be based on an
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