Appeal No. 1996-2853 Application 08/375,272 The Examiner has not alleged the resins of Arakawa to be cured resins. On the other hand, Appellants have stated that Arakawa’s resins are not cured resins. We must therefore assume that Arakawa’s resins are not cured. Thus we must decide whether the Examiner has shown the use of cured resins to be obvious. The Federal Circuit states that "[t]he mere fact that the prior art may be modified in the manner suggested by the Examiner does not make the modification obvious unless the prior art suggested the desirability of the modification." In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992), citing In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). "Obviousness may not be established using hindsight or in view of the teachings or suggestions of the inventor." Para-Ordnance Mfg. v. SGS Importers Int’l, 73 F.3d at 1087, 37 USPQ2d at 1239, citing W. L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d at 1551, 1553, 220 USPQ at 311, 312- 13. We find that the Examiner has not shown the use of a cured resin to be obvious, and we will not sustain the rejection of claims 21, 24 and 27 on this ground. 7Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 NextLast modified: November 3, 2007