Appeal No. 2003-1732 Page 7
Application No. 09/646,703
and pliable with respect to the underlying component, and not one having the “rough
surface” required by the appellants’ claims.
It thus is our view that the only suggestion for modifying the Doerre prosthesis in
the manner proposed by the examiner is found in the hindsight afforded one who first
viewed the appellants’ disclosure. This, of course, is not a proper basis for a rejection
under Section 103. In re Fritch, 972 F.2d 1260, 1264, 23 USPQ2d 1780, 1784 (Fed.
Cir. 1992). Such being the case, the teachings of Doerre fail to establish a prima facie
case of obviousness with regard to the subject matter recited in independent claims 1
and 8, and we will not sustain the rejection of these claims or of those claims
dependent from them.
CONCLUSION
The rejection is not sustained.
The decision of the examiner is reversed.
REVERSED
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