Appeal No. 98-2398
Application No. 08/815,251
page 4) is based on the hindsight benefit of having first2
read appellant’s disclosure and not on any fair teaching or
suggestion found in the applied prior art and patents
themselves. Absent the disclosure of the present application,
it is our opinion that one of ordinary skill in the art would
not have been motivated by the teachings of the applied prior
art to modify the initiator of Duguet in the manner urged by
the examiner so as to arrive at the subject matter set forth
in appellant’s independent claims 1, 11 and 16 on appeal.
For the above reasons, the examiner's rejection of
appellant’s claims 1 through 3, 11 through 13 and 16 under
35 U.S.C. § 103 as being unpatentable over Duguet in view of
"applicant’s admission" will not be sustained, and the
decision of the examiner rejecting the above-noted pending
claims of the present application is reversed.
2As pointed out by the Court in In re Hoch, 428 F.2d
1341, 1342 ,166 USPQ 406, 407 (CCPA 1970), where a reference
is relied upon to support a rejection, whether or not in a
minor capacity, there would appear to be no excuse for not
positively including the reference in the statement of the
rejection.
8
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