Appeal No. 2002-0919
Application No. 09/152,170
consolidation step, this step does not consolidate the thermoplastic liner and the overlaid
layer.
None of the cited references discloses the consolidation of a thermoplastic liner and
the overlaid filament layer to form a composite vessel. Thus, the combination of Forsman,
Ashton and Berg as proposed by the Examiner would not provide the invention of claims 1,
11 and 12. The mere fact that the prior art could be modified would not have made the
modification obvious unless the prior art suggested the desirability of the modification.
In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984); In re Laskowski,
871 F.2d 115, 117, 10 USPQ2d 1397, 1398 (Fed. Cir. 1989). The record indicates that the
motivation relied upon by the Examiner suggesting the combination of Forsman, Ashton
and Berg came from the Appellants’ description of their invention in the specification rather
than coming from the applied prior art and that, therefore, the Examiner used impermissible
hindsight in rejecting the claims. See W.L. Gore & Associates v. Garlock, Inc., 721 F.2d
1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983); In re Rothermel, 276 F.2d 393, 396,
125 USPQ 328, 331 (CCPA 1960). Accordingly, we reverse the Examiner’s rejection under
35 U.S.C. § 103(a) of claims 1 to 25 over the combination of Forsman, Ashton and Berg.
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