Appeal No. 2002-1961
Application No. 09/133,430 Page 12
have led an artisan to combine the teachings of Murashita and
Owada, in order to arrive at the claimed invention. We are not
persuaded by the examiner's assertion (answer, page 5) that an
artisan "would recognize the advantage of using differential data
between the one field and the another field, wherein the field
and the another field are of the same frame, and would be
motivated to look to Owada" other than from appellants'
disclosure.
In our view, the only suggestion for modifying Murashita in
the manner proposed by the examiner 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). From all of the above, we find that the
examiner has failed to establish a prima facie case of
obviousness of claim 1. It follows that we cannot sustain the
examiner's rejection of claim 1. Accordingly, the rejection of
claim 1, and claim 2, dependent therefrom, under 35 U.S.C.
§ 103(a) is reversed.
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