Appeal No. 2001-0098 7
Application No. 08/875,424
would have been obvious. Accordingly, the combination of references is merely a
hindsight reconstruction of the elements of the claimed subject matter. Based upon the
above finding and analysis, we conclude that the examiner has not established a prima facie
case of obviousness with respect to the aforesaid set of claims. See In re Dembiczak, 175
F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999) ("[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
prior art references").
Based upon the above analysis, we have determined that the examiner's legal
conclusion of obviousness is not supported by the facts. "Where the legal conclusion [of
obviousness] is not supported by [the] facts[,] it cannot stand." In re Warner, 379 F.2d
1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied, 389 U.S. 1057
(1968), reh’g denied, 390 U.S. 1000 (1968).
Remand To The Examiner
On consideration of the record, we remand the application to the jurisdiction of the
examiner for appropriate action in accordance with our findings infra. Upon return of this
application to the examiner, the examiner should reconsider the patentability of the
claimed subject matter under Section 103, with respect to at least claim 16 over EP ‘491
in view of Marèchal, and any possible combination of the aforesaid references with
additional references.
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