Appeal No. 2004-0919 Page 14
Application No. 09/842,607
cover layer having an ionomer blend of 30% of a high acid ionomer and 70% of a low
acid ionomer.
In our view, the only suggestion for modifying Saito in the manner proposed by
the examiner to arrive at the claimed invention 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).
For the reasons set forth above, the decision of the examiner to reject claims 1
to 10, 12, 13, 27 and 28 under 35 U.S.C. § 103 is reversed.
CONCLUSION
To summarize, the decision of the examiner to reject claims 11, 14 to 26 and 29
to 39 under 35 U.S.C. § 102(b) is affirmed and the decision of the examiner to reject
claims 1 to 10, 12, 13, 27 and 28 under 35 U.S.C. § 103 is reversed.
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