Appeal No. 2003-0459
Application 08/727,328
not teach notch “height” as a result effective variable, but also do not use their notches for the
same purpose disclosed by Johnson.
Under these circumstances, it cannot be said that the examiner has identified sufficient
suggestion or motivation in the applied prior art references to alter the height of notches and/or
the design of a double-stick, biaxially stretched polypropylene carpet tape in the manner
contradictory to the teachings of Johnson. In re Lee, 277 F.3d 1338, 1343, 61 USPQ2d 1430,
1433 (Fed. Cir. 2002)(“‘The factual inquiry whether to combine references must be thorough
and searching.’... It must be based on objective evidence of record. This precedent has been
reinforced in myriad decisions, and cannot be dispensed with.”); W.L. Gore & Assoc. 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 in suit, when no prior art reference or references
of record convey or suggest that knowledge, is to fall victim to the insidious effect of a hindsight
syndrome wherein that which only the inventor taught is used against its teacher.”).
Thus, on this record, we are constrained to agree with the appellants that the examiner
has not established a prima facie case of obviousness regarding the claimed subject matter.
5
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007