Appeal No. 1997-4284
Application No. 08/471,760
appear to have suggested the claimed subject matter to one of
ordinary skill in the art. See In re Rinehart, 531 F.2d 1048,
1051, 189 USPQ 143, 147 (CCPA 1976). The mere fact that the
prior art could be modified as proposed by the examiner is not
sufficient to establish a prima facie case of obviousness.
See In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783
(Fed. Cir. 1992). The examiner must explain why the prior art
would have suggested to one of ordinary skill in the art the
desirability of the modification. See Fritch, 972 F.2d at
1266, 23 USPQ2d at 1783-84.
The examiner has not explained why the prior art itself
would have led one of ordinary skill in the art to appellants’
claimed invention. Instead, the examiner has used appellants’
disclosure of their invention as a guide to piece together
isolated teachings from the references, such as Bloom’s
opaquing fluid test and Takeuchi’s holographic effect
enhancing layer, and to modify these teachings such that
appellants’ claimed invention is produced. In doing so, the
examiner has relied upon impermissible hindsight. See W.L.
Gore & Associates v. Garlock, Inc., 721 F.2d at 1553, 220 USPQ
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