Appeal No. 1998-2641
Application No. 08/700,020
which includes vibrating rollers, but these vibrating rollers
(1) do not correspond to the here claimed metering means, (2)
are not located at a metering nip as required by the
independent claim on appeal and (3) do not perform the here
claimed function of reducing the amount of coating passing the
metering means with the surface as the surface leaves the
coating chamber (e.g., see Figure 18 and the disclosure in
columns 15 through 17 relating thereto). These factual
circumstances militate against the examiner’s conclusion that
“it would have been obvious . . . to vibrate the metering
means of the admitted prior art as suggested by Dahlgren . . .
since Dahlgren teaches this to be known in the art to
eliminate ghosting and to provide a quality coating” (answer,
page 3). Indeed, for the reasons expressed above, Dahlgren
plainly contains no teaching or suggestion of vibrating a
metering means as required by appealed independent claim 21.
In light of the foregoing, it is our determination that
the rejection before us is based upon impermissible hindsight
derived from the appellants’ own disclosure rather than some
teaching, suggestion or incentive derived from the applied
prior art. W.L. Gore & Assocs. v. Garlock, Inc., 721 F.2d
1540, 1553, 220 USPQ 303, 312-313 (Fed. Cir. 1983), cert.
3
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