Ex Parte Lincecum - Page 5



          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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