Appeal No. 2000-1121
Application No. 08/827,656
desirability of the modification. In re Gordon, 733 F.2d 900,
902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).
In light of these legal principles, it is apparent that
the examiner has failed to establish a prima facie case of
obviousness within the meaning of 35 U.S.C. § 103. This is
because Rutherford simply does not contain any suggestion “to
put an anti-static rod-like article in a filter that is
wrapped in paper” as proposed by the examiner. In re
O’Farrell, Id. Thus, while patentee’s article containing an
anti-static additive could be placed in a filter (such as used
in cigarettes), such a modification would not have been
obvious because Rutherford would not have suggested the
desirability of the modification. In re Gordon, Id.
Notwithstanding a thorough consideration of the
examiner’s obviousness position, we are convinced that the
Section 103 rejection over Rutherford alone is based upon
impermissible hindsight wherein that which only the inventor
has taught is
used against its teacher. W.L. Gore & Assocs. v. Garlock,
Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir.
1983), cert. denied, 469 U.S. 851 (1984). It follows that the
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