Appeal No. 2000-0531
Application No. 08/782,151
Obviousness is tested by "what the combined teachings of the references would have
suggested to those of ordinary skill in the art." In re Keller, 642 F.2d 413, 425, 208 USPQ
871, 881 (CCPA 1981). However, it "cannot be established by combining the teachings of the
prior art to produce the claimed invention, absent some teaching or suggestion supporting the
combination." ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ
929, 933 (Fed. Cir. 1984). Moreover, the mere fact that the prior art could be so modified
would not have made the modification obvious unless the prior art suggested the desirability of
the modification. See In re Mills, 916 F.2d 680, 682, 16 USPQ2d 1430, 1432 (Fed. Cir.
1990); In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).
In this instance, while Benson does teach that tubings and fittings can be joined by heat
shrinking a fitting around a tubing, we find in these teachings no suggestion to modify the
admitted prior art fire-hose fitting method by heat-shrinking the fire hose to the coupling. In
our view, the only suggestion for modifying the admitted prior art method 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 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
rejection of independent claims 1, 4 and 12, or of claims 6, 9 and 13 which depend therefrom.
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