Appeal No. 2000-0558 Page 7
Application No. 08/912,585
We note that Hakanson teaches that "[t]he organic
coating composition useful in the practice of the present
invention may be any non-volatile, non-integral, organic,
electrically conductive composition" (column 3, lines 13-16).
We do not find any evidence of a teaching or suggestion in
Hakanson (or in applicant's admitted prior art) to use a
chromate treatment to provide a coating as required by claim
2. We note the examiner's contention that chromate
treatment/coating of metals is well known (answer, page 4),
however without some teaching or suggestion in the prior art
to use chromate treatment in Hakanson's process we must
conclude that the examiner's argument that it would have been
obvious to use chromate treatment in Hakanson's process relies
on impermissible hindsight.3 Hence, it is our opinion that
the combined teachings of applicant's admitted prior art and
Hakanson do not teach or suggest using chromate treatment and
3 Rejections based on ' 103 must rest on a factual basis with these facts
being interpreted without hindsight reconstruction of the invention from the
prior art. The examiner may not, because of doubt that the invention is
patentable, resort to speculation, unfounded assumption or hindsight
reconstruction to supply deficiencies in the factual basis for the rejection.
See In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert.
denied, 389 U.S. 1057 (1968).
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007