Appeal No. 2002-0037 Page 5
Application No. 08/899,292
time the invention was made to a person of ordinary skill in the art to have provided a
drive roller to drive Moore's pattern. To supply this omission in the teachings of the
applied prior art, the examiner made the above-noted determination that this difference
would have been obvious to an artisan. However, this determination have not been
supported by any evidence that would have led an artisan to arrive at the claimed
invention.2
In our view, the only suggestion for modifying Moore in the manner proposed by
the examiner to meet the above-noted drive roller limitation stems from hindsight
knowledge derived from the appellants' own disclosure. The use of such hindsight
knowledge to support an obviousness rejection under 35 U.S.C. § 103 is, of course,
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). It follows that we cannot sustain the examiner's rejections of claims 1 to 5 and
10 to 22.
2 In page 7 of the answer, the examiner stated that drive rollers for driving belts such as that
disclosed by Moore (i.e., pattern m) are old and well known in the art, particularly in the art of leather
splitting machines. First, we note that this statement of what is old and well in the art is different from that
set forth in the rejection (answer, p. 3) and therefore not before us in this appeal. Second, if it is old and
well known in the art to drive belts, such as Moore's pattern m, by drive rollers, then the examiner should
consider finding such prior art and applying that prior art in combination with Moore. In making this
suggestion, we are not inferring that the claimed subject matter would be suggested by the combined
teachings of Moore and any newly applied prior art. For example, in this appeal we have reached no
decision that Moore has "a predetermined gap" as claimed.
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007