Appeal No. 1998-1517 Page 11
Application No. 08/685,269
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). We therefore find that the examiner has failed
to establish a prima facie case of obviousness of claim 1. It
follows that we cannot sustain the examiner's rejection of
claim 1.
As the other independent claims 6 and 11 contain similar
limitations (claim 6), or narrower limitations (claim 11
requires a single predefined mirror drive with a predefined
capacity greater than or equal to a sum of the capacity of the
plurality of data drives), the rejection of claims 1-12 under
35 U.S.C.
§ 103 is reversed.
REMAND TO THE EXAMINER
On May 30, 2001 an Information Disclosure Statement (IDS)
was filed and has been matched with this application at the
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