Appeal No. 2001-2441
Application No. 09/067,923
that the ferromagnetic powder, which can be a pigment, can be
present in an amount of 30-97 wt% (answer, page 7). The examiner
argues that “[s]ince the overall pigment quantity may be greater
that [sic, than] 50%, it would have been obvious to one of
ordinary skill in this art to optimize operation by determining
proportions of white and magnetic pigments to give desired
opacity, brightness and magnetic properties”. See id. The
examiner, however, does not explain how Tokunaga would have led
one of ordinary skill in the art to carry out this optimization
such that the amount of white pigment is outside Tokunaga’s
disclosed range.
The record indicates that the motivation relied upon by the
examiner for optimizing such that the amount of white pigment is
40-50 wt% comes from the appellants’ disclosure of their
invention rather than coming from Tokunaga and that, therefore,
the examiner used impermissible hindsight in rejecting claim 17.
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); In re Rothermel, 276 F.2d 393, 396, 125 USPQ 328, 331
(CCPA 1960). Accordingly, we reverse the rejection of this
claim.
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