Appeal No. 2004-0421
Application No. 09/749,923
by the Examiner is not sufficient to establish a prima facie case of obviousness. See In
re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992). The
Examiner must explain why the prior art would have suggested to one of ordinary skill
in the art the desirability of the modification. See Fritch, 972 F.2d at 1266, 23
USPQ2d at 1783-84. The Examiner has failed to cite evidence in the prior art that the
suggestion to modify the cited references as proposed by the Examiner exists.
The record indicates that the motivation relied upon by the Examiner for adding
a fullerene containing material to the semiconductor component of the prior art comes
from the Appellants’ description of their invention in the specification rather than
coming from the applied prior art and that, therefore, the Examiner used impermissible
hindsight in rejecting the claims. See W.L. Gore & Associates v. Garlock, Inc., 721
F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983); In re Rothermel, 276 F.2d
393, 396, 125 USPQ 328, 331 (CCPA 1960). Accordingly, we reverse the Examiner’s
rejection under 35 U.S.C. § 103(a) over the combination of the admitted prior art and
Fagan. The rejections of claims 12 to 27 and 30 are reversed.
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