Appeal No. 1997-2839
Application No. 08/448,778
in web form" (answer, page 8).6
Appellant responds that "[t]here clearly and
unequivocally is no basis for one of ordinary skill in the art
to completely modify the Marazzi et al '684 arrangement to
provide for web printing at high speed rather than feeding it
one sheet at a time at low speed merely because a printer
exists per se that can operate at speeds of 100 feet per
minute . . . there is nothing about Marazzi et al '684 which
suggests such an apparatus is possible" (brief, page 8). We
agree.
In our view, the only suggestion for modifying Marazzi
'684 or Marazzi '467 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 Assocs., Inc. v. Garlock,
6The examiner also makes reference (answer, page 8) to Ranger (U.S. Patent No.
4,647,332, March 3, 1987), but without mention in the statement of the
rejection. Where a reference is relied on to support a rejection, whether or
not in a "minor capacity," there would appear to be no excuse for not
positively including the reference in the statement of the rejection. See In
re Hoch 428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970).
8
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