Appeal No. 1997-1022 Page 8
Application No. 08/368,359
In our view, the only suggestion for modifying Oram in
the manner proposed by the examiner to meet the above-noted
limitation stems from hindsight knowledge derived from the
appellant's 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 Associates, Inc. v. Garlock, Inc., 721 F.2d 1540,
1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied, 469
U.S. 851 (1984). It follows that we cannot sustain the
examiner's rejections of claims 1 through 9.3
REMAND
Claim 1 appears to be directed solely to the pants
insert, per se, shown in Figure 1 of the application. Thus,
claim 1 may be anticipated by a suitably sized piece of sheep
skin that is capable of being used as a pants insert in the
manner set forth in claim 1.
3We have also reviewed the Moretz reference additionally
applied in the rejection of dependent claims 3 and 6 but find
nothing therein which makes up for the deficiency of Oram and
Mann discussed above.
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