Appeal No. 2000-0788 Page 8
Application No. 09/017,618
every element of the claimed invention may be found in the
applied prior art, such is insufficient to defeat
patentability of the claims under appeal since we fail to see
any motivation, suggestion or teaching for a person having
ordinary skill in the art to have combined the applied prior
art to arrive at the claimed invention.
In our view, the only suggestion for modifying the
applied prior art in the manner proposed by the examiner
(answer, pp. 3-4) 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 Assocs., Inc.
v. Garlock, Inc., 721 at 1553, 220 USPQ at 312-13. It follows
that we cannot sustain the examiner's rejections of claims 1
to 20.
REMAND
We remand this application to the examiner to further
consider the patentability of claims 1 to 20 under 35 U.S.C.
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