Appeal No. 1998-1073
Application 08/488,521
cols. 5-7). The examiner advances the unsupported position that the application of negative pressure in
the apparatus shown in the referenced would have been a modification within the ordinary skill in this art
because the use of negative pressure was “conventional in the art forming a fluidized bed” and one of
ordinary skill would have expected that such modification would provide “similar results” (answer,
pages 5-6; see also pages 9-10). Appellants contend that it is “not conventional to employ both
negative and positive pressures when working with such fine particles” (brief, page 6).
It may well be that, as the examiner alleges, the application of a negative pressure to a fluidized
bed was an optional, conventional modification in the art, but the examiner has not adduced any
evidence or scientific reason establishing why one of ordinary skill in this art, armed with this unidentified
knowledge, would have found in Sakakibara et al. and/or this unidentified knowledge a suggestion or
motivation to modify the apparatus used in the reference to include means to apply negative pressure to
the fluidized bed of particles in which the core of the mold to be surface treated is repeatedly moved
(e.g., col. 5, lines 44-63). In this respect, the examiner has not responded to appellants’ contention that
negative pressure is not conventionally employed along with positive pressure when fine particles are
used in a fluidized bed. See 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). That one of ordinary skill in the art could have so
modified the apparatus of Sakakibara et al. is insufficient suggestion or motivation for the modification.
See, e.g., In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992).
Therefore, we determine from this record that the examiner has resorted to hindsight gained
from appellants’ specification and claims in order to reach the conclusion that the claimed invention was
prima facie obviousness over Sakakibara et al., which is an inappropriate standard of obviousness
under 35 U.S.C. § 103(a). See generally, W.L. Gore & Associates v. Garlock, Inc., 721 F.2d
1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983) (“To imbue one of ordinary skill in the art with
knowledge of the invention . . . when no prior art reference or references of record convey or suggest
that knowledge, is to fall victim to . . . hindsight . . . wherein that which only the inventor taught is used
against its teacher.”).
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