Appeal No. 1997-3266
Application 08/374,960
the thermoset layer, as is now claimed.
This argument is deficient in that it does not explain why the
prior art itself would have led one of ordinary skill in the
art to combine the teachings of the references as proposed by
the examiner. See In re Rinehart, 531 F.2d 1048, 1051, 189
USPQ 143, 147 (CCPA 1976). Particularly, the examiner has not
explained the basis in the prior art for the above-quoted
“[t]hose skilled in the art would have recognized . . .”
argument. The record indicates that rather than coming from
the prior art, the teaching relied upon by the examiner for
using a hot melt adhesive to attach a thermoset layer to a
cloth layer comes from appellants’ disclosure of their
invention in the specification. The record, therefore,
indicates that examiner’s rejection is based upon
impermissible hindsight. 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).
Consequently, we reverse the rejection of claim 10.
The Mahn reference is not relied upon by the examiner for
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