Appeal No. 2001-1667
Application No. 09/117,280
in the Hart process since such is a known alternating twist
device/method in the optical fiber communications industry."
Examiner's Answer, page 4.
We agree with appellant that the examiner's rejection can
only be based on impermissible hindsight reasoning. See Appeal
Brief, page 8.
In order to prevent the use of hindsight, "the examiner must
show reasons that the skilled artisan, confronted with the same
problems as the inventor and with no knowledge of the claimed
invention, would select the elements from the cited prior art
references for combination in the manner claimed." In re
Rouffet, 149 F.3d 1350, 1357, 47 USPQ2d 1453, 1457-58 (Fed. Cir.
1998). It is not sufficient for the examiner to rely on a high
level of ordinary skill in the art to provide the motivation to
combine the teachings of the cited references. See id. Rather,
the examiner must "explain what specific understanding or
technological principle within the knowledge of one of ordinary
skill in the art would have suggested the combination." Id. The
examiner asserts that the substitution of one twisting device for
another would have been obvious. This simply does not provide
the requisite explanation of the specific understanding or
principle within the knowledge of one of ordinary skill in the
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