Appeal No. 1997-0473
Application No. 07/870,985
provided by appellants’ disclosure of the invention. However, use of this information as a
basis for establishing a prima facie case of obviousness, within the meaning of 35 U.S.C.
§ 103, would constitute impermissible hindsight. There must be some reason, suggestion,
or motivation found in the prior art whereby a person of ordinary skill in the field of the
invention would make the modifications required. That knowledge can not come from the
applicant’s invention itself. Diversitech Corp. v. Century Steps, Inc., 850 F.2d 675,
678-79, 7 USPQ2d 1315, 1318 (Fed. Cir. 1988); In re Geiger, 815 F.2d 686, 688, 2
USPQ2d 1276, 1278 (Fed. Cir. 1987); Interconnect Planning Corp. v. Feil, 774 F.2d
1132, 1143, 227 USPQ 543, 551 (Fed. Cir. 1985). Thus, on this record, the examiner has
not provided those facts or evidence which would reasonably support a conclusion that the
claimed subject matter would have been prima facie obvious within the meaning of 35
U.S.C. § 103. Where the examiner fails to establish a prima facie case, the rejection is
improper and will be overturned. In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598
(Fed. Cir.1988). Therefore, the rejection of claims 15 - 18 and 20, under 35 U.S.C. § 103
as unpatentable over the combination of Cohen and Bradley is reversed.
SUMMARY
To summarize, the rejection of claims 15 - 18 and 20 under 35 U.S.C. § 112, first
paragraph, is vacated. The rejection of claims 15 - 18 and 20 under 35 U.S.C. § 103 is
reversed. The application is remanded to the examining group for consideration of the
issues raised by this decision.
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