Appeal No. 1997-2097
Application No. 08/191,137
basis for a prima facie case of obviousness. See In re
Brouwer, 77 F.3d 422, 425, 37 USPQ2d 1663, 1666 (Fed. Cir.
1996); In re Ochiai, 71 F.3d 1565, 1570,
37 USPQ2d 1127, 1131 (Fed. Cir. 1995).
From our perspective, the examiner has not convincingly
explained where the motivation may be found in the combined
teachings of the references to support the modifications of
Klingenmaier as proposed by the examiner. This motivation
appears to come solely from the description of the invention
at issue herein in appellant's specification. Thus, on this
record, we conclude that the examiner used impermissible
hindsight when rejecting the claims in the manner set forth in
the answer. See W.L. Gore & Associates 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). We note that the
additional references applied against claims 11, 13 and 15 do
not cure the above-noted deficiencies. Accordingly, on this
record, we will not sustain the examiner's stated rejections.
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