Appeal No. 2000-2230 Page 13
Application No. 08/706,767
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). It follows that we cannot sustain the examiner's
rejections of claims 15 to 34.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 15 to 34 under 35 U.S.C. § 112, second paragraph, is
reversed; the decision of the examiner to reject claims 15 to
24 under
35 U.S.C. § 112, first paragraph, is affirmed; the decision of
the examiner to reject claims 25 to 34 under 35 U.S.C. § 112,
first paragraph, is reversed; and the decision of the examiner
to reject claims 15 to 34 under 35 U.S.C. § 103 is reversed.
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