Appeal No. 1998-3309 8
Application No. 08/618,306
the cosmetic art prior to appellant’s invention to replace a
porous, flexible and deformable applicator pad with a porous,
rigid applicator, the purpose of the Hall applicator pad is so
different from that of Berghahn and Lathrop that one of ordinary
skill would not, in our view, have found in Berghahn or Lathrop
a suggestion to provide Hall with a rigid and non-deformable
porous application element, as recited in claim 15. In our
view, the only suggestion for modifying Hall in the manner
proposed by the examiner to meet the limitations of claim 15
stems from hindsight knowledge derived from 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 & Assocs., 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 claim 15 under 35 U.S.C. § 103 based on Hall, Berghahn and
Lathrop or of claims 3 and 5 through 10, dependent thereon.
As to claims 16 and 17, which depend from claim 15, neither
Jakubowski nor Citterio cures the deficiencies of the Hall,
Berghahn, Lathrop combination. Therefore, we must reverse the
rejections of claim 16 and 17 as well.
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