Appeal No. 2006-0587
Application No. 10/017,483
is only the appellants’ own disclosure which contains any
teaching or suggestion for such a modification. This fact
implies that the examiner’s obviousness conclusion has been
improperly derived based on impermissible hindsight. See W.L.
Gore & Assocs., Inc. v. Garlock, 721 F.2d 1540, 1553, 220 USPQ
303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S. (1984).
Moreover, this implication of hindsight is reinforced by the
examiner’s statement that “one of ordinary skill would envision
that such opposite functionality could be an obvious variation of
the claimed invention as it will only be necessary to reset the
fuel cell control system parameter to operate in an opposite
fashion to satisfy the claimed requirement” (answer, pages 7-8).
Indisputably, it is only via hindsight knowledge of the
appellants’ disclosure including the appealed claims that an
artisan “would envision that such opposite functionality could be
an obvious variation of the claimed invention” (id.).
In addition, it is appropriate to reiterate the appellants’
well taken point that established legal precedence vitiates the
examiner’s apparent position that his obviousness conclusion
is supported by the fact that his proposed opposite
functionality “could be an obvious variation” (id.). The fact
that the prior art could be modified to produce a claimed
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