Appeal No. 1998-3003 Page 19
Application No. 08/589,621
limitations stems from hindsight knowledge derived from the
appellants' 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 the decision of the examiner
to reject claim 5 under 35 U.S.C. § 103 is reversed.
Claim 6
The examiner determined (first Office action, pp. 5-6)
that
"it would have been obvious to provide Fuentes with a piezo
electric transducer as shown by Dugan mounted on the outside
of the lure to better transmit vibrations." Thereafter, the
examiner states that
[i]t in [sic, is] not clear if Fuentes or Dugan employ a
choke coil as part of the oscillator circuit but it would
have been within the preview [sic, purview] of one
skilled in the art to employ one of the old and well
known oscillator circuits to drive the piezoelectric
transducer.
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