Appeal No. 2002-0242
Application 09/112,364
a compound within the general formulas in the appellants’ claim 1
is obtained. The record indicates that the motivation relied
upon by the examiner for combining particular parts of the
compounds of the applied references so as to arrive at a compound
within the general formulas in the appellants’ claim 1 comes from
the description of the appellants’ invention in their
specification and that, therefore, the examiner used
impermissible hindsight when rejecting the claims. 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 examiner’s rejection.1
1
1 Since no prima facie case of obviousness has been
established we need not address the evidence relied upon by the
appellants (brief, pages 3-5). See In re Piasecki, 745 F.2d
1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984).
5
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