Appeal No. 1998-0331
Application No. 08/297,257
been obvious. That is to say, there should be some objective
teaching in the prior art or knowledge generally available to
one of ordinary skill in the art that would have led that
individual to combine the relevant teachings. In re Fine, 837
F.2d at 1074, 5 USPQ2d at 1598.
Our review of the references confirms that none of the
references teaches a tapered roller bearing supporting a
spindle carrier in a multiple spindle bar machine. We also
note that the examiner has failed to make any assertion as to
the knowledge generally available to one of ordinary skill in
the art that would have led that individual to substitute a
tapered roller bearing for the conventional radial bearing
taught by Burka and Acme for supporting a spindle carrier. As
a result, we must agree with the appellants that the
examiner’s rejection fails to identify the necessary
motivation for modifying Acme in the manner proposed in the
rejection and is based on hindsight derived from the
examiner's understanding of 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 Assoc. v. Garlock, Inc., 721
-11-
Page: Previous 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 Next
Last modified: November 3, 2007