Appeal No. 1998-1942 Page 9
Application No. 08/530,254
appeal), the examiner believed that (1) Mallinen teaches all
the claimed elements except for the space defining member
being a gutter (trap); and (2) that it would have been obvious
to one of ordinary skill in the art to modify Mallinen's space
defining member to be a gutter (trap).
We agree with the appellants' argument (Brief, pp. 17-19)
that the examiner's rejection of claims 23 and 41 is in error.
Specifically, we see no reason from the teachings of the
applied prior art for one of ordinary skill in the art to have
modified Mallinen's space defining member to be a gutter
(trap) absent the use of hindsight knowledge derived from the
appellants' own disclosure. That is, there is no motivation4
from the applied prior art for an artisan to have converted
Mallinen's apparatus for preventing leakage water from flowing
out of a mounting and casing tube into a draining device as
set forth in claim 23.
4The 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).
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