Appeal No. 2001-0459
Application 09/171,769
teaches away from the claimed invention because Pollmann relates
to a single contact carrier and not to two contact carriers as
claimed [reply brief].
We will not sustain the examiner’s rejection of the
claims on appeal. We agree with appellant that the examiner’s
proposed combination of Pollmann, Kuhn and Haas is based on an
improper attempt to reconstruct the claimed invention in
hindsight. The examiner has not identified any specific portions
of the applied prior art which specifically support the
examiner’s asserted motivations for combining the applied prior
art. The examiner’s generalized motivations to combine appear to
be based on the examiner’s own opinions rather than on specific
suggestions found within the applied prior art. Since the
examiner has not identified any specific portions of the applied
prior art which support the proposed combination, we must
conclude that the only basis for combining these references is to
reconstruct the claimed invention in hindsight. Such a hindsight
reconstruction of the invention is improper.
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