Appeal No. 2000-1655 Page 10
Application No. 08/836,892
unfrozen soil layer (i.e., soil below the maximum freezing
depth) and reaction member 7, the examiner has not provided
any evidence in the rejections before us in this appeal as to
why it would have been obvious at the time the invention was
made to a person having ordinary skill in the art to have
modified Long's method and apparatus to arrive at the claimed
invention. In our view, the only suggestion for modifying2
Long 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. § 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).
2Upon return of this application to the examiner, the
examiner should review the background of the invention section
of U.S. Patent No. 4,818,148 to Takeda et al. (of record) to
determine whether or not the combined teachings of this patent
and Long would render any pending claim unpatentable under
35 U.S.C. § 103.
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