Appeal No. 1998-3158
Application No. 08/467,634
obviousness to be established over the applied references,
these references must have fairly suggested, to one of
ordinary skill in the art, combining their teachings to arrive
at the claimed invention. As discussed above, the examiner
has not set forth a convincing reason as to why the references
would have provided one of ordinary skill in the art with such
a suggestion. Instead, the examiner has relied upon
impermissible hindsight for motivation to combine the
teachings of the references. 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).
For the above reasons we conclude that, on this record,
the examiner has not established a prima facie case of
obviousness of appellants’ claimed invention.
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007