Appeal No. 1999-0702 Page 9
Application No. 08/858,564
claimed invention, absent the use of impermissible hindsight. 4
It follows that we cannot sustain the examiner's rejection of
claims 10 to 16 under 35 U.S.C.
§ 103.
We have also reviewed the references to Valenta,
Mitchell, Shiraki, Haley and Sinclair-Day additionally applied
in the respective rejections of claims 17 to 22 but find
nothing therein which makes up for the deficiency of Kiyohara
or the deficiency in the combined teachings of Kiyohara and
Schroer discussed above. Accordingly, we cannot sustain the
examiner's rejection of appealed claims 17 to 22 under 35
U.S.C. § 103.
CONCLUSION
4Hindsight knowledge derived from the appellant's own
disclosure to support an obviousness rejection under 35 U.S.C.
§ 103 is impermissible. See, for example, W. L. Gore and
Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ
303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
(1984).
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