Appeal No. 97-1848
Application 08/338,074
significant part of applicants' discovery, all as set out in
claims 1 and 21,8
When all is said and done, the most which can be said is
that the examiner's rejections are based on impermissible
hindsight and thus the rejections are flawed as a matter of
law. Compare In re McLaughlin, 443 F.2d 1392, 1395, 170 USPQ
209, 212 (CCPA 1971) (obviousness judgments are necessarily
based on hindsight; so long as judgment takes into account
only knowledge known in the art, there is no error). In this
case, the prior art reveals no connection between the hydroxyl
value level and acid etch resistance levels.
For the reasons given, the examiner's rejections should
be reversed.
C. Terminal disclaimer
There is a discussion on page 10 of applicants' appeal
brief concerning a requirement made by the examiner in an
advisory action (Paper 15) that a new terminal disclaimer be
filed to avoid a possible double patenting problem with
respect to application 08/345,918. Inasmuch as the examiner
This is not a case where an applicant is basing an argument on limitations which8
do not appear in the claims.
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Last modified: November 3, 2007