Appeal No. 2004-0893
Application No. 09/124,310 Page 15
Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177 (CCPA 1967). Our
reviewing court has repeatedly cautioned against employing
hindsight by using the appellants’ disclosure as a blueprint in
an attempt to reconstruct the claimed invention from the isolated
teachings of the prior art. See, e.g., Grain Processing Corp. v.
American Maize-Products Co., 840 F.2d 902, 907, 5 USPQ2d 1788,
1792 (Fed. Cir. 1988).
From our perspective, the examiner’s rejections appear to be
premised on impermissible hindsight reasoning and/or on
incomplete factual underpinnings and analysis to explain how the
claimed invention is arrived at from the combined teachings of
the prior art. On the record of this appeal, it is our view that
the examiner has not carried the burden of establishing a prima
facie case of obviousness with respect to the subject matter
defined by the appealed claims. Accordingly, we reverse the
examiner’s § 103(a) rejection of claims 1-28 over La Salmonie,
Itoh and DeVolpi on this record.
CONCLUSION
The decision of the examiner to reject claims 21-28 under
35 U.S.C. § 112, second paragraph as being indefinite for failing
to particularly point out and distinctly claim the subject matter
which applicant regards as invention; to reject claims 21-28
Page: Previous 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 Next
Last modified: November 3, 2007