Appeal No. 2006-0408
Application No. 09/775,451
Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Int. 1987) as
supporting his unpatentability determination. Rather than
reiterate the examiner's failure in this respect, we refer to
pages 13-15 of the Brief for a thorough exposition thereof.
Similarly, for reasons detailed by the appellant on pages
9-13 of the Brief and page 4 of the Reply Brief, the examiner has
utterly failed to recognize that In re Gordon, 733 F.2d 900,
221 USPQ 1125 (Fed. Cir. 1984) militates for the appellant's
patentability arguments and against the examiner's obviousness
conclusion.
In short, Sugimoto contains no teaching or suggestion
whatsoever for the modification proposed by the examiner. On the
record of this appeal, it is only the appellant's own disclosure
which contains any teaching or suggestion of such a modification.
There can be no rational dispute, therefore, that the examiner
has formulated his rejection based on impermissible hindsight
derived from the appellant's own disclosure. See W.L. Gore &
Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ
303, 313 (Fed. Cir. 1983).
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