Appeal No. 2006-1498
Application No. 09/973,031
in the art, displaying separate images of the members of a group
(answer, page 5). Even if one of ordinary skill in the art had
considered "life of something" to possibly pertain to a group,
the examiner has not established that Fountain would have fairly
suggested, to such a person, showing the members of the group in
separate images. The record indicates that the examiner's
motivation for using separate images comes from the appellants'
disclosure rather than coming from the applied reference and
that, therefore, the examiner used impermissible hindsight in
rejecting the appellants' claims. See W.L. Gore & Associates 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).
The examiner argues that there is no functional relationship
between the appellants' printed matter and the substrate (answer,
p. 6). The functional relationship is that the printed matter
must be located in a position on the insert such that it can be
readily identified with respect to which of a plurality of images
on the outer surface of a ply layer the information is
associated.
For the above reasons we conclude that the examiner has
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