Appeal No. 1997-3304 Page 7
Application No. 08/181,936
appellants. The teaching of Japan'833 simply does not deal
with problems associated with a trap comprising a chamber for
collecting chemical by-products, and it is therefore our view
that the Philipossian reference would not have motivated one
of ordinary skill in the art to modify the Japan'833
disclosure in the manner suggested by the examiner. Thus, it
is our determination that the examiner's rejection is based on
impermissible hindsight. Accordingly, the examiner has not3
presented a prima facie case of obviousness and, for these
reasons, we cannot sustain the examiner's rejection.
NEW GROUND OF REJECTION
Under the authority of 37 CFR § 1.196(b), this panel of
the Board introduces the following new ground of rejection as
to claims 1, 2, 8 and 9.
Claims 1, 2, 8 and 9 are rejected under 35 U.S.C. §
Obviousness may not be established using hindsight or in view of the3
teachings or suggestions of the inventor. See Para-Ordnance Mfg. v. SGS
Importers Int'l, 73 F.3d 1085, 1087, 37 USPQ 2d 1237, 1239 (Fed. Cir. 1995)
(citing W. L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1551,
1553, 220 USPQ 303, 311, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
(1984)).
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