Appeal No. 2004-1831
Application No. 09/338,095
circumstances compel us to regard the examiner’s obviousness
conclusion as based upon impermissible hindsight rather than some
teaching, suggestion or incentive derived from the applied prior
art. See W.L. Gore & Assocs. v. Garlock, Inc., 721 F.2d 1540,
1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied, 469
U.S. 851 (1984).
It follows that we also cannot sustain the examiner’s
section 103 rejection of claim 19 or of the claims which depend
therefrom as being unpatentable over Yoshino.
Concerning the rejection of claims 5, 6 and 22-24 based on
Yoshino in view of Steidinger, the examiner expresses his
obviousness position on page 8 of the answer with the following
language:
Yoshino teaches that the disclosed masking material is made
by the cutting of the plastic tubular film (column 3, lines
57-60 [sic, lines 32-35]) and Ste[i]dinger teaches that
perforating paper or plastic is well known in the art to be
equivalent to cutting for the purpose of manufacturing an
article of the paper or plastic (column 1, lines 13-16).
Therefore, one of ordinary skill in the art would have
recognized the utility of perforating instead of cutting in
Yoshino, which comprises a plastic film, in order to
manufacture an article from the film as taught by
Ste[i]dinger.
It therefore would have been obvious for one of
ordinary skill in the art at the time Applicants[’]
invention was made to have provided for perforating,
rather than cutting the film in Yoshino in order to
manufacture an article from the film as taught by
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