Appeal No. 1999-1942
Application 08/770,037
different unrelated problem, it always raises a question in
our mind whether the Examiner properly worked forward from the
teachings in the references to the claimed subject matter, or
has started with knowledge of applicants' invention and worked
backwards using whatever reasons are in the available prior
art to justify the rejection, which is impermissible
hindsight. "[T]he best defense against the subtle but
powerful attraction of a hindsight-based obviousness analysis
is rigorous application of the requirement for a showing of
the teaching or motivation to combine the references."
In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed.
Cir. 1999).
In our opinion, the Examiner has failed to establish the
requisite motivation to modify Foster, as modified by the APA,
to arrive at the claimed subject matter for at least two
reasons:
First, Penneck does not suggest using the anti-tracking
filler system in other than a molded or extruded polymer where
the filler is distributed uniformly throughout the material
and, importantly, does not suggest using layers of
oxide-filled and oxide-free materials. Penneck does not
- 9 -
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: November 3, 2007