Appeal No. 2001-1762
Application No. 09/226,903
reasonable expectation of success. While the examiner would
have us believe that the differences between Schappert, on one
hand, and Magnani and Sugimori, on the other, are
inconsequential, the examiner has not identified any evidence or
acceptable scientific reasoning to support this assertion. In
re Piasecki, 745 F.2d 1468, 1471-72, 223 USPQ 785, 787-88 (Fed.
Cir. 1984).
For these reasons, we hold that the examiner has engaged in
impermissible hindsight reconstruction. In re Dembiczak, 175
F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999); In re
Rouffet, 149 F.3d 1350, 1359, 47 USPQ2d 1453, 1459 (Fed. Cir.
1998); In re Warner, 397 F.2d 1011, 1016, 154 USPQ 173, 177
(CCPA 1967).
We therefore reverse the examiner’s rejection under 35
U.S.C. § 103(a) of all the appealed claims as unpatentable over
Schappert in view of Magnani and Sugimori.
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