Appeal No. 1998-1077 Page 10
Application No. 08/458,999
regarding a skilled artisan’s desire to lower grain size to
increase the dielectric constant is not persuasive in light of
appellants’ arguments at pages 9, 11 and 12 of the brief.
Rather, it is the motivation relied upon by the examiner that
is questionable since it appears to come solely from the
description of appellants’ invention in their specification.
Thus, from this record, we conclude 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).
Since the examiner has not established how Furukawa would
have led one of ordinary skill in the art to appellants’
claimed process, we will not sustain the examiner’s § 103
rejection.
Provisional Rejection
Our review of Patent and Trademark Office records shows
that application No. 08/445,402 is currently abandoned. Since
application No. 08/445,402 is no longer copending with the
present application, there remains no clear basis on which to
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