Appeal No. 2003-0839 Page 6
Application No. 09/646,339
blueprint for piecing together the prior art to defeat patentability—the essence of
hindsight.” In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed.
Cir. 1999) (citations omitted). The examiner’s rejections in this case are based
on improper hindsight and must be reversed.
Summary
We reverse the rejection of claims 1, 3, 4, and 8 because the examiner
has not shown that the prior art would have suggested products having a peak-
to-valley surface roughness of <5 µm. Those claims are not subject to any
outstanding rejections. Claim 2, however, remains rejected under 35 U.S.C.
§ 103 because Appellants did not appeal the rejection of claim 2.
REVERSED
William F. Smith )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Donald E. Adams )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Eric Grimes )
Administrative Patent Judge )
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