Appeal No. 2000-1488 Page 10
Application No. 08/826,832
art to add storage enclosures adjacent the sides of Eid's
weight box in view of the teachings in Brocklebank (i.e.,
spaces 22a and 22b being provided on opposite sides of
counterweight 20a). The appellant argues that the applied
prior art does not suggest the subject matter of claims 1 and
2. We agree with the appellant. The mere fact that the prior
art may be modified in the manner suggested by the examiner
does not make the modification obvious unless the prior art
suggested the desirability of the modification. See In re
Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84 n.14
(Fed. Cir. 1992), citing In re Gordon, 773 F.2d 900, 902, 221
USPQ 1125, 1127 (Fed. Cir. 1984). In this case, it is our
view that the only suggestion for modifying Eid in the manner
proposed by the examiner to arrive at the subject matter of
claim 1 or 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 Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553,
220 USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S.
851 (1984). In that regard, while Brocklebank may have
Page: Previous 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 Next
Last modified: November 3, 2007