Appeal No. 1997-3609
Application No. 08/483,349
USPQ2d 1276, 1278 (Fed. Cir. 1987); Interconnect Planning
Corp. v. Feil, 774 F.2d 1132, 1143, 227 USPQ 543, 551 (Fed.
Cir. 1985). Furthermore, the extent to which such reason,
suggestion, or motivation must be explicit in or may be fairly
inferred from the references is decided on the facts of each
case, in light of the prior art and its relationship to the
invention. It remains impermissible, nevertheless, to simply
engage in a hindsight reconstruction of the claimed invention
using applicants' specification as a template and selecting
elements from references to fill the gaps. In re Gorman, 933
F.2d 982, 986-987, 18 USPQ2d 1885, 1888 (Fed. Cir. 1991). On
this record, the examiner has offered neither evidence nor
facts to be found in the prior art which would have led one of
ordinary skill in this art to modify the adhesive composition
of Dormish in the manner proposed to arrive at the claimed
adhesive composition.
For the reasons set forth above, the teachings of Dormish
fail to suggest the desirability of the modification proposed
by the examiner. Additionally, the teachings of Mafoti and
Yilgör fail to cure the deficiencies of Dormish. Therefore,
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