Appeal No. 1998-1533 Page 14
Application No. 08/411,202
the use of impermissible hindsight , a person having ordinary5
skill in the art would have found it obvious to have provided
Tarter with additional braking pads since this would be
contrary to the teachings of Tarter.
For the reasons set forth above, the decision of the
examiner to reject claim 1 under 35 U.S.C. § 103 is reversed.
We have also reviewed the Kawase reference additionally
applied in the rejection of claim 2 (dependent on claim 1) and
the Iwashita reference applied in the rejection of claim 3
(dependent on claim 1) but find nothing therein which makes up
for the deficiencies of Tarter and Feldmann discussed above
regarding claim 1. Accordingly, we cannot sustain the
examiner's rejection of appealed claims 2 and 3 under 35
U.S.C. § 103.
5The 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).
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