Appeal No. 2001-2396
Application 09/286,150
The examiner apparently is of the view that the applied
references would have fairly suggested, to one of ordinary skill
in the art, supporting Webster’s catalyst on carbon and using
that catalyst, instead of the carbon-supported Pd in Kellner’s
comparative example, to make the 2-hydropentafluoropropene in
Kellner’s comparative example rather than making Webster’s
hexafluoropropylene. The examiner, however, has not explained
how the applied references themselves would have led one of
ordinary skill in the art to do so. See In re Rinehart, 531 F.2d
1048, 1051, 189 USPQ 143, 147 (CCPA 1976). The record indicates
that the motivation relied upon by the examiner for combining the
teachings of the applied references so as to arrive at the
appellants’ claimed method comes from the appellants’ disclosure
of their invention rather than coming from the applied prior art.
Consequently, the record indicates that the examiner relied upon
impermissible hindsight in rejecting claims 1 and 16. See W.L.
Gore & Associates v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ
303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984);
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