Appeal No. 1998-0784 Page 6
Application No. 07/949,567
references or knowledge known to those of ordinary skill in the art for concluding that the
claimed subject matter would have been obvious.
“A critical step in analyzing the patentability of claims pursuant to section 103(a) is
casting the mind back to the time of invention, to consider the thinking of one of ordinary skill in
the art, guided only by the prior art references and the then-accepted wisdom in the field.” In re
Kotzab, 217 F.3d 1365, 1369-70, 55 USPQ2d 1313, 1316-17 (Fed. Cir. 2000). “The invention
must be viewed not with the blueprint drawn by the inventor, but in the state of the art that
existed at the time.” In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir.
1999)(quoting Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1138, 227 USPQ 543, 547
(Fed. Cir. 1985). To establish a prima facie case of obviousness, “there must be some teaching,
suggestion or motivation in the prior art to make the specific combination that was made by the
applicant.”
In re Dance, 160 F.3d 1339, 1343, 48 USPQ2d 1635, 1637 (Fed. Cir. 1998). In our view, the
Examiner used the description of the invention provided in the specification as a blueprint for the
rejection. Thus, the record indicates that 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 for the reasons set forth above and as developed in Appellant’s Brief.
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