Ex parte CASTEEL et al. - Page 8




          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).                                                           

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