Appeal No. 2000-0486
Application No. 08/853,651
Fenton. Additionally, we believe it was inappropriate in this
instance for the examiner to have determined that the
limitation that the tip portion inner diameter is greater than
or equal to 0.15 inches would have been obvious without any
evidence providing some motivation, suggestion or teaching of
the desirability of making that change to Fenton.
In our view, the only suggestion for modifying Fenton to
arrive at the claimed invention in the manner proposed by the
examiner 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, In re
Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir.
1999); W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d
1540, 1553, 220 USPQ 303, 312-313 (Fed. Cir. 1983), cert.
denied, 469 U.S. 851 (1984).
We are aware that in rejecting claim 23, the examiner
also cites Allen for a teaching of a six iron having a face
area of 4165 mm (answer, p. 9) and Meredith for a teaching of2
“adjusting the flexibility of a shaft near a tip end in order
to locate a kick point of a shaft closer or farther away from
9
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