Appeal No. 1997-0074
Application No. 08/123,092
prior art suggests the desirability of doing so. In the1
present case, we fail to perceive any teaching, suggestion or
incentive which would have motivated one of ordinary skill in
the art to utilize the method recited in claim 1 other than
the hindsight accorded one who first viewed the appellants'
disclosure. This, of course, is not a proper basis for a
rejection under 35 U.S.C.
§ 103.2
It therefore is our conclusion that the combined
teachings of the four references applied against claim 1 fail
to establish a prima facie case of obviousness with regard to
the claimed subject matter. We will not sustain the rejection
of claim 1 or, it follows, of claims 2-5, which depend
therefrom. The same rationale applies to independent method
claims 7 and 11, which describe the invention in slightly
different terms, and the claims that depend from them. The
rejection of claims 7-11 and 14-16 also is not sustained.
1In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127
(Fed. Cir. 1984).
In re Fritch, 972 F.2d 1260, 1264, 23 USPQ2d 1780, 17842
(Fed. Cir. 1992).
8
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