Appeal No. 2001-0752
Application 09/084,680
Although the examiner presents reasons in support of
his proposed combination, he fails to explain why one of ordinary
skill in the art, given Boysen’s express teaching that the
antioxidants used in his coaxial cable are non-polar compounds,
would have been motivated to use a polar antioxidant based on
Keogh’s disclosure of using alkylhydroxyphenylalkanoyl hydrazine
in a telephone cable having a structure which differs from that
of a coaxial cable. Moreover, the examiner does not identify any
support in the prior art for his proposed motivation to combine
the reference teachings. Thus, it is clear that the examiner’s
rejection can only be based on improper hindsight reasoning. In
re Fine, 837 F.2d 1071, 1075, 5 USPQ2d 1596, 1600 (Fed. Cir.
1988) (“One cannot use hindsight reconstruction to pick and
choose among isolated disclosures in the prior art to deprecate
the claimed invention.”)
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