Appeal No. 1997-3719 Page 10
Application No. 08/559,156
In our view, the only suggestion for modifying Silicon
Sports 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 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 rejection of independent claim 1 and
claims 3 and 8 to 12 dependent thereon.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1, 3 and 8 to 12 under 35 U.S.C. § 103 is reversed.
REVERSED
JOHN P. McQUADE )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
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