Appeal No. 96-3441
Application 08/137,868
movable away from the drive side roll mount, and in
[Field] by providing a mill roll assembly, such as
shown in Fig. 3, movable relative to a stationary
operator’s side roll mount. As both references are
directed to solving one and the same problem, it is
unclear what advantages making the operator’s side roll
mount in [Field] movable would provide [reply brief,
Paper No. 15, pages 3 and 4].
Given the fair teachings of Field and Tajima, the
appellants’ position is well founded. The Field and Tajima
rolling mill arrangements are each adapted, in very different
ways, to produce products having diverse shapes. Since the Field
arrangement already has this capability, the modification in view
of Tajima proposed by the examiner would seem to be completely
unnecessary. In this light, it would appear that the only
suggestion for combining Field and Tajima in the manner advanced
by the examiner stems from hindsight knowledge derived from the
appellants’ own disclosure. The use of such hindsight knowledge
to support a conclusion of obviousness is, of course,
impermissible. See W.L. Gore & Assocs., Inc. v. Garlock, Inc.,
721 F.2d 1540, 1553, 220 USPQ 303, 312-313 (Fed. Cir. 1983),
cert. denied, 469 U.S. 851 (1984).
Accordingly, we shall not sustain the standing 35 U.S.C.
§ 103 rejection of claim 9, or of claims 2 and 7 which depend
therefrom, as being unpatentable over Field in view of Tajima.
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