Appeal No. 1998-0341
Application No. 08/476,293
902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). "Obviousness may
not be established using hindsight or in view of the teachings
or suggestions of the inventor." Para-Ordnance Mfg., Inc. v.
SGS Importers Int’l, Inc. 73 F.3d 1085, 1087, 37 USPQ2d 1237,
1239 (Fed. Cir. 1995), citing W. L. Gore & Assocs., Inc. v.
Garlock, Inc., 721 F.2d at 1551, 1553, 220 USPQ at 311, 312-13
(Fed. Cir. 1983), cert. denied,
469 U.S. 851 (1984).
As pointed out above, not only does Balda teach away from
the combination, the Examiner’s reason to combine references
runs counter to his explanation of why process considerations
should be ignored. Since there is no evidence in the record
that the prior art suggested the desirability of the
combination, we will not sustain the Examiner’s rejection of
claim 11.
The remaining claims on appeal also contain the above
limitations discussed with regard to claim 11, and thereby, we
will not sustain the rejection as to these claims.
-11-11
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007