Appeal No. 2004-0390 Page 9
Application No. 09/727,397
would have led one of ordinary skill in the art to have modified Allen to arrive at the
claimed invention for the reasons adequately set forth in the brief (pp. 5-12). In our
opinion, the only possible suggestion for modifying Allen in the manner proposed by the
examiner to meet the above-noted limitations stems from hindsight knowledge derived
from the appellant's own disclosure.1
For the reasons set forth above, the decision of the examiner to reject claim 1,
and claims 2 and 3 dependent thereon, under 35 U.S.C. § 103 is reversed.
We have also reviewed the references to Chow and Hu additionally applied in
the rejection of claim 5 (dependent on claim 1) but find nothing therein which makes up
for the deficiencies of Allen and Kohal discussed above regarding claim 1. Accordingly,
the decision of the examiner to reject claim 5 under 35 U.S.C. § 103 is also reversed.
1 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).
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