Appeal No. 1996-2077
Application 08/271,922
that, from the outset, the examiner relied on impermissible hindsight in making his
determination of obviousness. In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780,
1784 (Fed. Cir. 1992)(“It is impermissible to engage in hindsight reconstruction of the
claimed invention, using the applicant’s structure as a template and selecting elements
from references to fill the gaps”); Interconnect Planning Corp. v. Feil, 774 F.2d 1132,
1138, 227 USPQ 543, 547 (Fed. Cir. 1985); W.L. Gore & Assocs. v. Garlock, Inc., 721
F.2d 1540, 1553, 220 USPQ 303, 312-313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
(1984)(“To imbue one of ordinary skill in the art with knowledge of the invention in suit,
when no prior art reference or references of record convey or suggest that knowledge, is to
fall victim to the insidious effect of a hindsight syndrome wherein that which only the
inventor taught is used against its teacher”).
Moreover, as noted by the examiner in his rejection, the design of the support is not
the only difference between the structure and method of decomposing ozone described by
Carr and the present invention. Carr does not disclose an aluminum or aluminum alloy
support having an anodized surface layer at least 2 µm thick wherein said anodized
surface layer is formed by anodizing at a temperature of about 30E-37E C. In attempting to
compensate for these deficiencies the examiner relies on the teachings of either Yamada,
Honicke or Moskovits. Answer, p. 5. The examiner argues that Yamada and Honicke
disclose a method of making an aluminum oxide layer by anodic oxidation of aluminum in
2
diluted acids such as sulfuric or phosphoric acid in a direct current of about 9 amps/ft and
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