Ex parte NASVIK et al. - Page 7

                 Appeal No. 1997-0635                                                                                     Page 7                        
                 Application No. 08/375,183                                                                                                             

                 prior art, the applied prior art would not have taught or                                                                              
                 suggested a gang form having a plurality of form liners as                                                                             
                 recited in claim 4 mounted to a backing member.1                                                                                       

                          In our view, the only suggestion for modifying the                                                                            
                 applied prior art in the manner proposed by the examiner to                                                                            
                 meet all the limitations of claim 4 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.  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).                                                                                                                       

                          Thus, upon evaluation of all the evidence before us, it                                                                       
                 is our conclusion that the evidence adduced by the examiner is                                                                         
                 insufficient to establish a prima facie case of obviousness                                                                            

                          1We have also reviewed the references additionally                                                                            
                 applied in the rejection of dependent claims 5 to 8 and 11 but                                                                         
                 find nothing therein which would have suggested the subject                                                                            
                 matter of claim 4.                                                                                                                     

Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  Next 

Last modified: November 3, 2007