Appeal No. 1998-1930 Page 8
Application No. 08/517,183
derived from the appellants' own disclosure. The examiner's 5
use of impermissible hindsight is made clear from the above-
noted determination of obviousness since one of the examiner's
reasons (i.e., to provide an indicator as to what species of
fish the rod is intended to be used in catching) for modifying
Muk Kim is clearly not found in the applied prior art but is
found only the appellants' disclosure. With regard to the
other reason (i.e., to provide a pleasing ornamental design
which is realistic) for modifying Muk Kim, it is our belief
that an artisan would not have been motivated from the
combined teachings of Muk Kim and Evers to have modified Muk
Kim's fishing rod to contain a simulation of a fish mounted
about Muk Kim's cylinder 1. It follows that we cannot sustain
the examiner's rejection of claims 2 to 8, 11 to 14, 18 and 20
to 26.
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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