Appeal No. 1999-2131 Page 14
Application No. 08/971,504
The examiner does not describe where in the prior art
there is any teaching or suggestion of the floating and locked
conditions as expressed in claims 49-58 and 65-74 or the
relative outside and inside diametric clearances as expressed
in claims 25-40. The appellants argue that claims 25-40, 49-
58 and 65-74 recite a drill bit having a thrust washer with
certain dimensional characteristics not found in any of the
art of record (brief, page 8). In response, the examiner
briefly explains that "it would be the natural and expected
result of a non-fixed thrust washer as at reference 58 of
Drake, to float while unloaded and lock while loaded, because
of friction" (answer, page 4). We assume the examiner is
referring to Drake's thrust washer (86), not to the flat
annular surface (58) on the journal body (50). Even so,
without any reasoning as to how "friction" would cause the
limitations of appellants' claims to be satisfied by the
combination of Drake and Du Mond, we must conclude that the
only suggestion would be impermissible hindsight.4 Further we
4 Obviousness may not be established using hindsight or in view of the
teachings or suggestions of the inventor. See Para-Ordnance Mfg. v. SGS
Importers Int'l, 73 F.3d 1085, 1087, 37 USPQ 2d 1237, 1239 (Fed. Cir. 1995)
(citing W. L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1551,
1553, 220 USPQ 303, 311, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
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