Appeal No. 1997-1861
Application No. 08/412,235
23 USPQ2d 1780, 1783-84 n.14 (Fed. Cir. 1992). The
determination of obviousness must be based on facts, and not
on unsupported generalities. See In re Freed, 425 F.2d 785,
787, 165 USPQ 570,
571 (CCPA 1970). Moreover, there must be some basis in the
references for concluding that the claimed subject matter
would have been obvious.
In our view, the motivation for the examiner's stated
rejection appears to come solely from the description of
appellant’s invention in their specification. Thus, the
record indicates that the examiner used impermissible
hindsight when rejecting the claims. See W.L. Gore & Assoc.
v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13
(Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984); In re
Rothermel, 276 F.2d 393, 396, 125 USPQ 328, 331 (CCPA 1960).
Accordingly, we will not sustain the examiner’s rejection for
the reasons set forth above and as developed in appellant’s
brief.
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