Appeal No. 1997-3563 Page 7
Application No. 08/321,460
claimed invention, it must be ascertained whether there is any
suggestion or motivation in the prior art to make the
selection made by the applicant. Interconnect Planning Corp.
v. Fell, 774 F.2d 1132, 1143, 227 USPQ 543, 551 (Fed. Cir.
1985). In essence, the examiner*s obviousness conclusion
appears to be based upon impermissible hindsight derived from
the appellants’ own disclosure rather than a teaching,
suggestion or incentive derived from the applied prior art.
It follows that the rejection under 35 U.S.C. § 103 of the
appealed claims as being unpatentable over the applied
references should not be sustained.
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