Appeal No. 1999-1370
Application No. 08/513,350
circumstances, we are constrained to regard the examiner’s
obviousness conclusion as based on impermissible hindsight
rather than prior art teachings. To the extent that the
examiner’s conclusion of obviousness might implicitly involve
an inherency theory, it is appropriate to emphasize that a
retrospective view of inherency cannot serve as a substitute
for actual teaching or suggestion in the prior art. In re
Newell, 891 F.2d 899, 901, 13 USPQ2d 1248, 1250 (Fed. Cir.
1989). It follows that we cannot sustain the section 103
rejection advanced by the examiner on this appeal.
As a final matter of concern, we note that the examiner
refers to a nonapplied reference of record (i.e., the Klasell
patent 5,439,749) on page 4 of the answer in an apparent
attempt to support his obviousness conclusion. However, in
assessing the section 103 rejection before us, we have not
considered this reference because the examiner has not
positively included it in his statement of the rejection. See
In re Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3
(CCPA 1970); also see The Manual of Patent Examining
Procedure, § 706.02(j)(7th ed., Rev. 1, Feb. 2000).
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