Appeal No. 1997-3801
Application 08/397,960
such an explanation but, rather, has merely made an assertion
that one of ordinary skill in the art would have determined
the degree of fusing by routine experimentation. The
motivation relied upon by the examiner for using only partial
fusing comes solely from the description of appellant’s
invention in the specification. Thus, 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 reverse the examiner’s
rejections.5
DECISION
The rejections under 35 U.S.C. § 103 of claims 1, 2, 6-11
and 15 over Warther in view of Ohta, and claims 3-5 and 12-14
over Warther in view of Ohta and Biddle, are reversed.
REVERSED
5 Biddle, which is applied by the examiner to dependent
claims 3-5 and 12-14, is not relied upon for any teaching
which would remedy the above-discussed deficiency in the
disclosures of Warther and Ohta.
6
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007