Appeal No. 1998-1584
Application 08/711,631
inorganic oxide support (e.g., col. 3, lines 7-13). Indeed, the examiner has not established with
evidence or scientific explanation why one of ordinary skill in the art would have modified the processes
of Horiuchi by using the composite oxide of Yao, which also contains hafnium oxide in addition to
cerium oxide and zirconium oxide, as such a support (answer, page 10). Cf. In re Brouwer, 77 F.3d
422, 425, 37 USPQ2d 1663, 1666 (Fed. Cir. 1996).
Accordingly, in the absence of evidence necessary to support the examiner’s position as we
have discussed above, we reverse the rejection of appealed claims 1 through 6 over Yao in view of
Mullhaupt and the rejection of appealed claims 7 through 12 over Horiuchi in view of Yao. We find it
clear from this record that the examiner has resorted to hindsight gained from appellants’ specification
and claims in order to reach the conclusion that the claimed mixed oxide and the method for making the
same were prima facie obviousness over the applied references, which is an inappropriate standard of
obviousness under § 103(a). See generally, W.L. Gore & Associates v. Garlock, Inc., 721 F.2d
1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983) (“To imbue one of ordinary skill in the art with
knowledge of the invention . . . when no prior art reference or references of record convey or suggest
that knowledge, is to fall victim to . . . hindsight . . . wherein that which only the inventor taught is used
against its teacher.”).
The examiner’s decision is reversed.
Reversed
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
CHARLES F. WARREN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
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)
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