Appeal No. 1999-1065
Application No. 08/754,379
together by a pin as taught by Roth and Chin, “since the use
of a brake made of at least two or more portions provides for
optimum wear and use of the brake material.” Id. at 3, 4.
The appellants argue that a person of ordinary skill in
the art would not have arrived at the claim invention based on
the combined teachings of the applied prior art, except by the
use of impermissible hindsight. See brief, p. 4.
We agree.
In our view, the only suggestion for modifying the
bicycle brake of Everett in the manner proposed by the
examiner to meet the limitations of claims 25 and 32 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 rejection of
claims 25 and 32 or of claims 26, 27, 33 and 34, dependent
thereon.
CONCLUSION
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