Appeal No. 1999-2035 Page 12
Application No. 07/772,698
In our view, the only suggestion for modifying Grant in
the manner proposed by the examiner to meet the above-noted
limitation 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 32 through 37. 4
CONCLUSION
To summarize, the decision of the examiner to reject
claims 32 through 37 under 35 U.S.C. § 112, second paragraph,
is reversed and the decision of the examiner to reject claims
32 through 37 under 35 U.S.C. § 103 is reversed.
4We have also reviewed the reference to Healy
additionally applied in the rejection of claims 36 and 37 but
find nothing therein which makes up for the deficiencies of
Grant and Bourgin discussed above.
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