Appeal No. 1999-1785
Application No. 08/512,656
manner proposed by the examiner to meet the above-noted
limitations of appellant’s claim 17 stems from hindsight
knowledge derived from the 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 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 claim 17 under
35 U.S.C. § 103(a) as being unpatentable over Totten.
Under the provisions of 37 CFR § 1.196(b), we enter the
following new grounds of rejection against appellant’s claims
1, 2, 3, 4, 6, 16, 19 and 20.4
Claims 1, 2, 6 and 20 are rejected under 35 U.S.C. §
102(b) as being clearly anticipated by Totten. Having
previously discussed Totten, we further note that Totten
4In October, 1997, 37 CFR 1.196(b) was amended to permit
this Board to enter a new ground of rejection against “any
pending claim”, including any claim previously allowed by the
examiner or indicated by the examiner to contain allowable
subject matter.
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