Appeal No. 1996-3195 Page 8
Application No. 08/228,086
coating, and thermosetting polyurethane coating as recited in
claim 27. From our perspective, the assertions of the
examiner regarding the fabric structure arrangement(s) that
would have been obvious from the teachings of Kerr (answer,
pages 4 and 5) appear to be based on conjecture. In this
regard, the examiner has not specifically identified which
portions of the disclosure of Kerr would have rendered the
specifically claimed fabric arrangement of claim 27 obvious to
one of ordinary skill in the art.
The determination of obviousness must be based on facts,
and not on unsupported generalities. See In re Freed, 425
F.2d 785, 787, 165 USPQ 570, 571 (CCPA 1970). Moreover, there
must be some basis in the references for concluding that the
claimed subject matter would have been obvious. Simplicity
and hindsight are not proper criteria for resolving the issue
of obviousness. See In re Horn, 203 USPQ 969, 971 (CCPA
1979). In our view, the motivation for the examiner's stated
rejection appears to come solely from the description of
appellants’ invention in their specification. Thus, the
record indicates that the examiner used impermissible
hindsight when rejecting the claims. See W.L. Gore &
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