Appeal No. 96-3441 Application 08/137,868 movable away from the drive side roll mount, and in [Field] by providing a mill roll assembly, such as shown in Fig. 3, movable relative to a stationary operator’s side roll mount. As both references are directed to solving one and the same problem, it is unclear what advantages making the operator’s side roll mount in [Field] movable would provide [reply brief, Paper No. 15, pages 3 and 4]. Given the fair teachings of Field and Tajima, the appellants’ position is well founded. The Field and Tajima rolling mill arrangements are each adapted, in very different ways, to produce products having diverse shapes. Since the Field arrangement already has this capability, the modification in view of Tajima proposed by the examiner would seem to be completely unnecessary. In this light, it would appear that the only suggestion for combining Field and Tajima in the manner advanced by the examiner stems from hindsight knowledge derived from the appellants’ own disclosure. The use of such hindsight knowledge to support a conclusion of obviousness is, of course, impermissible. See W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984). Accordingly, we shall not sustain the standing 35 U.S.C. § 103 rejection of claim 9, or of claims 2 and 7 which depend therefrom, as being unpatentable over Field in view of Tajima. -5-Page: Previous 1 2 3 4 5 6 7 NextLast modified: November 3, 2007