Appeal No. 1999-2361
Application 08/410,496
established a prima facie case of obviousness with respect to
the subject matter on appeal. Therefore, the rejections on
appeal are reversed. Our reasons follow.
In the instant appeal, the examiner's rationale for the
rejection is reminiscent of the situation in In re Gordon, 733
F.2d 900, 221 USPQ 1125 (Fed. Cir. 1984). In that case, a
rejection under 35 U.S.C. § 103 was reversed. The rationale
for the rejection was that the claimed subject matter was
prima facie obvious from the reference subject matter turned
upside down. The Federal Circuit reasoned that it would not
have been obvious to turn the reference subject matter upside
down, in use, absent some motivation or suggestion therefor.
In the situation at bar, the examiner provides no such
motivation or suggestion. Accordingly, we are constrained to
reverse.
We also note the presence in the examiner's arguments of
the long discredited obvious to try rationale for a 35 U.S.C.
§ 103 rejection. The examiner expressly argues that one
skilled in the art would be inclined to try the opposite
configuration. Obvious to try is not the proper standard to
be applied under 35 U.S.C.
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