Appeal No. 2004-0412
Application No. 09/052,358
that “Ref 1 represents the first subset of addresses are sampled
at the first subset of time domains while Ref 2 represents the
second subset of addresses are sampled at the second subset of
time domains” (answer, page 5).
For a prima facie case of obviousness to be established, the
teachings from the prior art itself must appear to have suggested
the claimed subject matter to one of ordinary skill in the art.
See In re Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA
1976). The examiner has not explained how Chen would have fairly
suggested, to one of ordinary skill in the art, sampling, in the
first time domain region, the upper but not the lower space
domain region, and sampling, in the second time domain region,
the lower but not the upper space domain region. Thus, the
record indicates that the motivation relied upon by the examiner
for sampling in that manner comes from the appellants’ disclosure
of their invention rather than coming from the applied prior art
and, therefore, that the examiner used impermissible hindsight in
rejecting the appellants’ 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). Accordingly,
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