Appeal No. 1997-0589 Page 8
Application No. 08/109,842
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
appellants’ invention in their specification. 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 for the reasons set
forth above and as developed in appellants’ brief.
CONCLUSION
The decision of the examiner to reject claims 2-4, 16 and
17 under 35 U.S.C. § 103 as being unpatentable over Wennerberg
is reversed.
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