Appeal No. 2000-0116
Application No. 08/950,539
rejection, supra, that there would be motivation to modify Lee
in order “to provide an efficient and accurate process,” but
it is not apparent what there is in the prior art that would
suggest to one of ordinary skill that modifying Lee would make
the Lee apparatus any more efficient and accurate than before.
In our view, the examiner’s reason for combining the
references was not based upon a suggestion in the prior art of
the desirability of making the combination, but upon improper
hindsight gleamed from appellant’s own disclosure.
Accordingly, rejection (1) will not be sustained.
Rejection (2)
Rejection (2) will likewise not be sustained, since
Kramer, the additional reference applied, does not overcome
the deficiencies of the combination of references applied in
rejection (1).
Conclusion
The examiner’s decision to reject claims 1 to 8, 11 to 14
and 16 to 20 is reversed.
No time period for taking any subsequent action in
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