Ex parte TEUFEL - Page 7




          Appeal No. 1997-2632                                                        
          Application No. 08/163,902                                                  

          references that composting would be an effective method to                  
          reactivate spent diatomite filtering agent for any purpose let              
          alone for use as an insecticidally active material as part of               
          a soil amendment.                                                           
               It is our view that the motivation for the examiner's                  
          stated rejection appears to come solely from the description                
          of the method at issue in appellant's specification.                        
          Certainly, the examiner has not convincingly established how                
          the applied references' teachings would have led a skilled                  
          artisan to the herein claimed process.  Thus, the record                    
          indicates that the examiner used impermissible hindsight when               
          rejecting the claims.  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).  Accordingly, we              
          will not sustain the examiner's rejection of method claims 1,               
          2, 4 and 5 for the reasons set forth above and as developed in              
          appellant's brief.                                                          
                            Rejection of Claims 3 and 6                               
               Our disposition of the examiner's  103 rejection as                   
          applied to claims 3 and 6 is another matter.  Since appealed                

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