Appeal No. 1999-0404 Page 21
Application No. 08/580,256
With regard to this difference, the examiner determined
(answer, p. 5) that it would have been obvious at the time the
invention was made to a person having ordinary skill in the
art to employ in Chiang convex deformed portions formed on the
heat transfer ribs as disclosed in Kenkyujo. We do not agree.
We agree with the appellants' argument (brief, pp. 11)
that the applied prior art does not suggest the claimed
subject matter. In our view, the only suggestion for
modifying Chiang in the manner proposed by the examiner to
meet the above-noted limitation 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). It follows that we cannot sustain the examiner's
rejections of claims 7 and 8.
Claim 9
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