Appeal No. 1998-1650 Page 11
Application No. 08/715,749
obvious to press such grooves simultaneously with the
deformation utilized by Wendel for securing and shaping
the bearing insert following the teaching of Wendel that
it is desirable to combine steps.
The appellant argues (brief, pp. 5-11) that the examiner
is "employing impermissible hindsight reconstruction" and that
the applied prior art does not "teach or suggest the forming
of the bearing's overall shape and the forming of the grooves
in the bearing in a single manufacturing step." We agree. In
our view, the only suggestion for modifying Wendel in the
manner proposed by the examiner to meet the limitations of
claims 24 and 25 stems from hindsight knowledge derived from
the appellant's own disclosure. Specifically, it is our6
opinion that the combined teachings of Wendel and Murray would
not have been suggestive of providing Wendel's conical bearing
step 4 with grooves which are formed simultaneously with the
formation of Wendel's conical bearing step 4.
6The 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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