Appeal No. 2004-0859
Application 08/866,456
obtain the complete filling of the opening with metal desired by
Sato.2 The record indicates that the motivation for doing so
relied upon by the examiner comes from the appellant’s disclosure
rather than coming from the applied prior art and that,
therefore, the examiner used impermissible hindsight when
rejecting the 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, we reverse the
examiner’s rejections.
2 The examiner does not rely upon Lur, Liou or Kim for any
disclosure that remedies the above-discussed deficiency in Sato
and Liu as to the independent claims.
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