Appeal No. 1999-0387 Page 17
Application No. 08/590,278
Drake in the manner proposed by the examiner to meet the
limitations of claims 5 and 11 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).
For the reasons set forth above, the decision of the
examiner to reject claims 5, 9, 11 and 19 under 35 U.S.C. §
103 is reversed.
The obviousness rejection over Drake and Johnsen
We sustain the rejection of claims 12-14 and 18 under
35 U.S.C. § 103 as being unpatentable over Drake in view of
Johnsen, but not the rejection of claims 8 and 17.
In this rejection (answer, p. 4), the examiner determined
that it would have been obvious to one of ordinary skill in
the art "to utilize Johnsen's teaching of providing adhesive
spaced from the upper edge in the invention of Drake."
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