Appeal No. 2001-0528 Page 10
Application No. 08/892,348
Rejection (4)
We will not sustain the rejection of claims 24 and 25
under 35 U.S.C. § 103 as being unpatentable over Schonert in
view of Kofahl and Coulthard.
In our view, the only suggestion for combining the
teachings of Coulthard with the teachings of Schonert and
Kofahl in the manner proposed by the examiner (answer, pp. 8-
9) to meet the limitations of claims 24 and 25 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). It follows that we cannot
sustain the examiner's rejection of claims 24 and 25.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 21 to 24 under 35 U.S.C. § 102(b) is affirmed; the
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