Appeal No. 1998-3353
Application 08/692,711
the examiner has done here to arrive at appellants’
claimed invention. Hindsight analysis is clearly
improper. In re Deminski, 796 F.2d 436, 443, 230 USPQ
313, 316 (Fed. Cir. 1986).
Accordingly, we cannot agree that the examiner has
made out a prima facie case of obviousness based on
Herman in view of Froeschl, and we also cannot agree that
the examiner has made out a prima facie case of
obviousness based on Herman in view of Gantz. Therefore,
the examiner’s decision
to reject claims 21 through 25 and 28 through 33 under
35 U.S.C. § 103 as being unpatentable over Herman in view
of Froeschl is reversed, and the examiner’s decision to
reject claims 21, 23, 24 and 28 under 35 U.S.C. § 103 as
being unpatentable over Herman in view of Gantz is also
reversed.
This application is remanded to the examiner to
consider the prospect of making the following rejections:
1. A double patenting rejection of one or more of
the appealed claims based on any claim in appellants’ U.
S. Patent No. 5,570,616 (copy attached) as amended in the
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