Appeal No. 2000-1514 Page 10
Application No. 09/038,450
positioning the power mechanism outboard of an outer edge of
the chock path. To supply this omission in the teachings of
the applied prior art, the examiner determined that this
difference would have been obvious to an artisan. However,
this determination has not been supported by any evidence that
would have led an artisan to arrive at the claimed invention.
In any event, although a prior art device "may be capable of
being modified to run in the manner claimed, there must be
suggestion or motivation in the reference to do so." In re
Mills, 916 F.2d 680, 682, 16 USPQ2d 1430, 1432 (Fed. Cir.
1990). See also In re Gordon, 733 F.2d 900, 902, 221 USPQ
1125, 1127 (Fed. Cir. 1984). In this case, there is no
suggestion and motivation provided in the applied prior art to
modify Springer in the manner indicated by the examiner.
In our view, the only suggestion for modifying Springer
in the manner proposed by the examiner to meet the above-noted
limitations 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.
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