Appeal No. 1998-2354
Application 08/054,588
Tsai off-gasses to obtain the proper oxygen pressure for each
stage of his method (col. 4, lines 26-27), and it is not
apparent that one of ordinary skill in the art would have
considered the amount of oxygen off-gassed to be sufficient
for transporting the pulp. The examiner applies Lavigne only
to dependent claims and does not rely upon it for any teaching
which would remedy the deficiency in Tsai and Edlund.
The record indicates that, for the above reasons, the
motivation relied upon by the examiner for combining the
references comes from the description of the appellant’s
invention in the specification rather than coming from the
applied prior art and that, therefore, the examiner used
impermissible hindsight when rejecting the claims. See W.L.
Gore & Associates v. Garlock, Inc., 721 F.2d 1540, 1553, 220
USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
(1984); In re Rothermel, 276 F.2d 393, 396, 125 USPQ 328, 331
(CCPA 1960). Accordingly, we reverse the examiner’s
rejections.
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