Appeal No. 2002-1778 Page 11
Application No. 09/285,078
Dependent claims 4 and 5 include the limitation that the band and the clamp are
integral in a unitary construction and comprise a plastic.
In our view, absent the use of impermissible hindsight6, there is no teaching,
suggestion or motivation in the applied prior art (i.e., Jacks, Gallagher, Kaber and
Moore) to make Jacks main spring clip 1 and secondary spring clip 2 integral in a
unitary construction and comprise a plastic. While Kaber does teach a band and a
clamp that are integral in a unitary construction, it is our opinion that Kaber would not
have suggested modifying Jacks' main spring clip 1 and secondary spring clip 2 to be
integral in a unitary construction since Jacks teaches specifically to allow the secondary
spring clip 2 to pivot about the main spring clip 1 and that removing this functionality
would not have been obvious at the time the invention was made to a person of
ordinary skill in the art from the teachings of the applied prior art.
For the reasons set forth above, the decision of the examiner to reject claims 4
and 5 under 35 U.S.C. § 103 is reversed.
6 The use of hindsight knowledge derived from the appellant's own disclosure 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).
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