Appeal No. 1997-2495
Application 08/200,554
nor Gautier et al. disclose adhesives that are among those taught to be used in the process disclosed by
Gehle. While appellants do acknowledge in their specification that adhesives as specified in the
appealed claims are found in, inter alia, three United States Patents (page 4, line 26, and page 5, lines
9-10), as found by the examiner (answer, page 4), that is all that they acknowledge. Thus, this limited
disclosure is the extent of the evidence of record concerning the knowledge of such adhesives in the
prior art.2 Such known adhesives also would not be used in the process disclosed by Gehle.
The examiner has provided no realistic rationale why one of ordinary skill in this art would have
found in this obviously diverse collection of prior art disclosures and “prior art admissions,” which do
not even set forth a bare outline of a three step adhering method, any objective teaching, suggestion or
motivation leading to the claimed invention as a whole, including each and every limitation of the claims
(see answer, e.g., pages 5-6). Accordingly, it is abundantly manifest from this record that the examiner
has improperly indulged in hindsight by relying on appellants’ invention in reaching his conclusion that the
invention encompassed by the appealed claims would have been obvious to one of ordinary skill in this
art from such prior art information and knowledge. See, e.g., Rouffet, supra (the specific
understanding or principal within the knowledge of one of ordinary skill in the art leading to the
modification of the prior art in order to arrive at appellants’ claimed invention must be explained); Dow
Chem., 837 F.2d at 473, 5 USPQ2d at 1531-32.
The examiner’s decision is reversed.
2 There is no indication in the record that the examiner has considered the disclosure of these three
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