Ex Parte MORRISON et al - Page 6




          Appeal No. 1997-2252                                                        
          Application No. 08/225,965                                 Page 6           


          neither Alesi or Kozlowski teach or suggest positioning a ring              
          including a cut out portion in a cavity of one of the dies.                 
          Likewise, while the examiner is correct that Swenson does teach             
          the use of an undercut edge shaping means (i.e., a cut out) in              
          the molding art, Swenson does not teach or suggest positioning a            
          ring including a cut out portion in a cavity of one of the dies.            
          Additionally, it is our opinion that the combined teachings of              
          the applied prior art would not have suggested the step of                  
          "positioning a ring including a cut out portion in said cavity."            
          In our view, the only suggestion for modifying Spengler in the              
          manner proposed by the examiner to meet the above-noted step                
          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).  It follows that             
          we cannot sustain the examiner's rejections of claims 1 to 10.              














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