Appeal No. 1999-2832 Page 8
Application No. 08/816,559
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 9 to 17 under 35 U.S.C. § 103 is
reversed.
New ground of rejection
Under the provisions of 37 CFR § 1.196(b), we enter the
following new ground of rejection.
Claims 9 to 21 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which the
appellant regards as the invention.
Claims are considered to be definite, as required by the
second paragraph of 35 U.S.C. § 112, when they define the
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