Ex parte MOORE - Page 6




          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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