Appeal No. 2000-1620
Application 08/507,326
crosslinking.” Indeed, the examiner does not point to any evidence with respect to the level of
ordinary skill in this art in support of his position.
Accordingly, on this record, we must reverse the ground of rejection under
§ 103(a) because we conclude that the examiner’s position is based on hindsight. See generally,
In re Lee, 277 F.3d 1338, 1343, 61 USPQ2d 1430, 1433-34 (Fed. Cir. 2002), and cases cited
therein (the requirement for objective factual underpinnings for a rejection under § 103(a)
extends to the determination of whether the references can be combined); In re Rouffet, 149 F.3d
1350, 1358, 47 USPQ2d 1453, 1458 (Fed. Cir. 1998) (“hindsight” is inferred when the specific
understanding or principal within the knowledge of one of ordinary skill in the art leading to the
modification of the prior art in order to arrive at appellant’s claimed invention has not been
explained); In re Dow Chem. Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531-32 (Fed. Cir. 1988)
(“The consistent criterion for determination of obviousness is whether the prior art would have
suggested to one of ordinary skill in the art that [the claimed process] should be carried out and
would have a reasonable likelihood of success viewed in light of the prior art. [Citations omitted]
Both the suggestion and the expectation of success must be founded in the prior art, not in the
applicant’s disclosure.”); cf. Ex parte Levengood, 28 USPQ2d 1300, 1301-02 (Bd. Pat. App. &
Int. 1993) (“At best, the examiner’s comments regarding obviousness amount to an assertion that
one of ordinary skill in the relevant art would have been able to arrive at appellant’s invention
because he had the necessary skills to carry out the requisite process steps. This is an
inappropriate standard for obviousness. . . . That which is within the capabilities of one skilled in
the art is not synonymous with obviousness. Ex parte Gerlach, 212 USPQ 471 (Bd. App.
1980).”).
The examiner’s decision is reversed.
Reversed
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