Appeal No. 1998-2732
Application No. 08/244,163
in Russell concerning the inner and outer layers of the tube
(column 2, lines 54-61), the teaching in Preto concerning a
hollow container or collapsible bag made of a
polyolefin/polyamide blend which is impermeable to propellant
gases, and the appellants’ admissions regarding a tube made of a
polyolefin are insufficient. At best, the combined teachings of
the prior art might have led one of ordinary skill in the art to
make a tube made from Preto’s blend. Such a tube, however, is
not the invention recited in appealed claim 1.
The remaining appealed claims all depend from appealed
claim 1. It follows then that the examiner has also failed to
establish a prima facie case of obviousness against these
dependent claims.
Because the examiner has not pointed to a specific
teaching, motivation, or suggestion in the prior art to combine
the references so as to arrive at the here claimed invention
with a reasonable expectation of success, we hold that the
examiner has engaged in impermissible hindsight reconstruction
using the appellants’ own specification as a template. In re
Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir.
1992);
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