Appeal No. 2000-0487 Page 7
Application No. 08/856,228
In our view, the only suggestion for modifying the
applied prior art in the manner proposed by the examiner to
meet the printed silhouette 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 Assocs., Inc. v. Garlock, Inc., 721
F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983), cert.
denied, 469 U.S. 851 (1984).
For the reasons set forth above, the decision of the
examiner to reject independent claim 20, as well as dependent
claims 7 to 9, 11 and 12, is reversed.
Claims 14
We sustain the rejection of claim 14 under 35 U.S.C. §
103.
2(...continued)
modifying a reference, standing alone, is not "evidence." See
In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed.
Cir. 1999).
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