Ex parte CLEMENTS - Page 8




          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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