Appeal No. 2000-0034
Application 08/473,634
following: 1) that Mundt’s conduit exit is at the distance
away from the member recited in the appellants claim 34, 2)
that the applied references would have led one of ordinary
skill in the art to modify Mundt’s reactor to provide such a
distance between the conduit exit and the member, or 3) that
the conduit exit when Mundt is modified in view of Akashi as
proposed by the examiner would be at such a distance from the
member. The record indicates that the motivation relied upon
by the examiner for combining the references so as to arrive
at the method recited in the appellants’ claim 34 comes from
the appellants’ disclosure of their method in the
specification rather than coming from the applied prior art
and that, therefore, the examiner used impermissible hindsight
when rejecting that claim. 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).
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