Appeal No. 2000-0301 Page 8
Application No. 08/690,402
As set forth above, a prima facie case of obviousness is
established by presenting evidence that would have led one of
ordinary skill in the art to combine the relevant teachings of
the references to arrive at the claimed invention. The mere
fact that a difference (between the teachings of the prior art
and the claimed subject matter) does not provide any new
result or solve any recognized problem does not, ipso facto,
make that difference obvious under 35 U.S.C. § 103. Thus, we
view the examiner's reliance (answer, p. 7) on In re Kuhle,
526 F.2d 553, 188 USPQ 7 (CCPA 1975) to be misplaced in this
instance.
In our view, the only possible suggestion for modifying
the applied prior art in the manner proposed by the examiner
to meet the "cuff" limitations of the claims under appeal
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. It follows that we cannot sustain the
examiner's rejections of claims 1 to 7.
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