Appeal No. 2005-0776
Application No. 09/898,321
structure for the crossover locations in Kingsley [and Fukuda],
the claims are drawn to a device. The rejection is not required
to show how the method of manufacture of Kingsley [and Fukuda]
and Ahn would be modified, only that the claimed device would be
obvious” (answer, pages 16 and 20). That argument is not well
taken because a method modification would be needed to arrive at
the device proposed by the examiner.
Thus, the record indicates that the examiner’s modification
of the Kingsley and Fukuda devices is based upon impermissible
hindsight in view of the appellants’ disclosure rather than being
based upon the applied references themselves. 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); In re
Rothermel, 276 F.2d 393, 396, 125 USPQ 328, 331 (CCPA 1960).
Accordingly, we reverse the examiner’s rejection.
DECISION
The rejections under 35 U.S.C. § 103 of claims 1-3 and
6 over Kingsley in view of Ahn, claim 4 over Kingsley in view of
Ahn and Akiyama, claim 5 over Kingsley in view of Ahn and Hwang,
claim 7 over Kingsley in view of Ahn and Street, claims 8 and 27-
30 over Fukuda in view of Ahn, claim 9 over Fukuda in view of Ahn
6
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