Appeal No. 1997-3099
Application 08/191,886
We do not question that it would be possible to modify the film described by
Newsome to arrive at the claimed film and process of preparing the film. However, the fact
that the prior art could be so modified would not have made the modification obvious
unless the prior art suggested the desirability of the modification. In re Gordon, 733 F.2d
900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). Here, we find no reason stemming
from the prior art which would have led a person having ordinary skill to the modify the
multi-layer film of Newsome by reducing the thickness of the core layer to a value of less
than the explicitly described 0.15 mils. Thus, in our opinion, the examiner has failed to
establish a prima facie case of obviousness within the meaning of 35 U.S.C. § 103 of the
subject matter of the claims on appeal.
On these facts, we are constrained to find that the examiner has failed to establish
that it would have been obvious to those of ordinary skill in the art at the time of the
invention to prepare a multilayer film having a core layer with a thickness of from about
0.05 to less than 0.10 mils comprising the blend of nylon and EVOH as presently claimed.
The only source of a suggestion to so modify the film described by Newsome is appellants’
own disclosure of the invention. Therefore, we must conclude that the examiner has relied
on impermissible hindsight in making his determination of obviousness. In re Fritch, 972
F.2d 1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992) (“It is impermissible to engage
in hindsight reconstruction of the claimed invention, using the applicant’s structure as a
template and selecting elements from references to fill the gaps”).
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