Appeal No. 2002-0502
Application 08/853,425
to well known methods of attachment such as adhesive, fusion,
thermal bonding or extrusion (answer, page 9). The examiner
argues that one of ordinary skill in the art, having selected
those methods of attachment of Whyte’s absorbent pad to the
embossed lamina, would have used the methods to attach Heiman’s
liquid-absorbing layer to the liquid-impervious layer to reduce
cost by eliminating Heiman’s expensive binding and/or stitching
step (answer, page 5). The examiner, however, has not explained
why one of ordinary skill in the art would have been led by the
applied references to select adhesive, fusion, thermal bonding or
extrusion to attach Whyte’s absorbent pad to the embossed lamina,
let alone to make that selection and then use that method to bond
Heiman’s liquid-absorbing layer to the liquid-impervious layer.
The record indicates that the motivation relied upon by the
examiner for making these selections comes from the appellant’s
disclosure of his invention rather than coming from the applied
prior art and that, therefore, 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). Hence, the
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