Appeal No. 1997-4284
Application No. 08/471,760
the durable layer will accept an opaquing fluid with no
beading, the fluid will dry to a smooth continuous coating,
and the dried fluid will adhere to the durable layer after
exposure to ultra-violet radiation. The film formed from the
opaquing fluid is not part of the article produced by Bloom’s
method.
The examiner argues that Bloom’s opaquing test, together
with Bloom’s teaching that the substrate can be reflective, is
an adequate suggestion to convert the imaged transparency to a
reflective print having a reflective layer (answer, page 5).
The examiner, however, does not explain why the reference
would have led one of ordinary skill in the art to this
modification. The examiner apparently has relied upon
appellants’ disclosure of their invention for this guidance,
and in doing so has used 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).
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