Appeal No. 2003-0093 Page 6
Application No. 09/29213
ordinary skill in the art to modify Mancini in the manner proposed by the examiner, other
than the hindsight afforded one who first viewed the appellant’s disclosure. This, of
course, is not a proper basis for a rejection. In re Fritch, 972 F.2d 1260, 1264,
23 USPQ2d 1780, 1784 (Fed. Cir. 1992).
It therefore is our conclusion that Mancini fails to establish a prima facie case of
obviousness with regard to the subject matter recited in claim 1, and we will not sustain
the rejection.
Nor, it follows, will we sustain the two rejections of dependent claim 4 and the
single rejection of dependent claim 9 on the same grounds. We note in passing that
there is no evidence to support the examiner’s conclusion in the second rejection of
claim 4 that “it was conventional in the art” to have air swirls in the same direction in this
type of nozzle.
Dependent claim 2 stands rejected on the basis of Mancini plus either Russell or
Sharpe. However, the shortcoming in Mancini is not overcome by the teachings of
either of the secondary references, which were cited as evidence of the obviousness of
using flared inlets in the air passages. The rejection of claim 2 is not sustained.
Claim 3, which depends from claim 9, has been separately rejected as being
unpatentable over Mancini, with the examiner opining that it would have been obvious
to optimize the air flow rates of the Mancini injector. In addition to the fact that there is
no evidence in support of this conclusion, claim 3 inherits the defect in the rejection
applied against claim 1, and this rejection cannot be sustained.
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