Appeal No. 2002-1447
Application 09/167,776
layer. If the shell strand protruded through the slag layer but
those of ordinary skill in the art were not aware of this
problem, it is not apparent how those of ordinary skill in the
art would have been led by Stahl to the appellant’s solution.3
The only motivation relied upon by the examiner for
modifying Stahl so as to arrive at the appellant’s claimed
invention comes from the appellant’s disclosure of his invention
rather than from the applied prior art. Consequently, 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
under 35 U.S.C. § 103.
3 If there was no prior art problem, i.e., if the prior art
strand shells never protruded through the slag layer, then Stahl
necessarily meets the appellant’s claim requirement that the slag
layer height is greater than or equal to the height of strand
shell penetration into the slag layer. The lack of a prior art
problem, however, has not been established by the examiner.
7
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007