Appeal No. 1999-2831 Page 9
Application No. 08/703,435
The obviousness rejection
We will not sustain the rejection of claims 2 to 5 under
35 U.S.C. § 103.
We have reviewed the references to Cole '928 and Cole
'987 applied together with Burnelli in the rejection under
35 U.S.C. § 103 of claims 2 to 5 but find nothing therein
which makes up for the deficiencies of Burnelli discussed
above. In our view, the only suggestion for modifying
Burnelli in the manner proposed by the examiner to meet the
above-noted limitation and the additional limitations of claim
2 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).
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