Appeal No. 1998-1919 Page 11
Application No. 08/620,993
Ursrey does not show interchangeable containers but it
would have been within the purview of one skilled in the
art to have another and different lure body to mount the
circuit elements in, to for example, change the lure
color, shape or other characteristic to attract fish.
In our opinion the examiner has failed to present any
evidence that would have suggested the proposed modification
to Ursrey. In our view, the only suggestion for modifying
Ursrey in the manner proposed by the examiner to meet the
claimed limitations 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 3, 4, 16-23 and
33-39.
Claims 12-14 and 30-32
With respect to claims 12-14 and 30-32, the examiner
determined (first Office action, p. 3) that it would have been
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