Appeal No. 1998-2945 Page 7
Application No. 08/624,734
The above-noted limitations of claims 1 and 7 are not
suggested by the applied prior art. In that regard, the
combined teachings of Taylor, Isham and Diesing would not have
suggested a piston having an annularly corrugated sleeve
disposed within the cylinder of the piston. To compensate for
the inadequacy of the applied prior art, the examiner made
determinations (answer, pages 4, 6 and 10) that it would have
been obvious to one of ordinary skill in the art at the time
the invention was made to have placed the cylinder assembly of
Taylor (i.e., damper 10) or the cylinder assembly of Isham
(i.e., section B) within a power cylinder housing as that is a
recognized feature in the art for shielding a structure from
exposure to the environment. However, this determination by
the examiner has not been supported by any evidence that would
have led an artisan to arrive at the claimed invention.
In our view, clearly the only suggestion for modifying
Taylor or Isham in the manner proposed by the examiner to meet
the above-noted limitations stems from hindsight knowledge
derived from the appellant's own disclosure. The use of such
hindsight knowledge to support an obviousness rejection under
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