Appeal No. 2000-1564
Application 08/924,307
where the motivation for making such a laminate based upon the
type and application of the battery, as argued by the
examiner, is found in the applied references. The record
indicates that the motivation for modifying the applied prior
art as proposed by the examiner comes from the appellants’
description of their invention in the specification rather
than coming from the applied prior art and that, therefore,
the examiner used impermissible hindsight when rejecting the
claims. 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). Accordingly, we reverse
the examiner’s rejection.
DECISION
The rejection of claims 15-30 under 35 U.S.C. § 103 over
Mizutani in view of Hayashi and JP ‘049 is reversed.
REVERSED
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