Appeal No. 1999-2735 Page 8
Application No. 08/672,440
cross-shape) recess which extends to the periphery of the
carbide substrate into the shallower recess portion of
Olmstead's recess which is surrounded by the carbide substrate
and does not extend to the periphery.
Accordingly, we do not see in either Adia or Olmstead any
basis for their combination in the manner suggested by the
examiner to arrive at the claimed subject matter and we can
only conclude that the examiner's finding, in this regard, is
based on impermissible hindsight.1
It is our opinion that the combined teachings of Olmstead
and Adia would not have suggested the subject matter recited
in claim 1 to one of ordinary skill in the art and we will not
sustain the examiner's rejection of claim 1 or of claims 2
through 12 which include the limitations of claim 1.
1 Obviousness may not be established using hindsight or in view of the
teachings or suggestions of the inventor. See Para-Ordnance Mfg. v. SGS
Importers Int'l, 73 F.3d 1085, 1087, 37 USPQ 2d 1237, 1239 (Fed. Cir. 1995)
(citing W. L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1551,
1553, 220 USPQ 303, 311, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
(1984)).
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