Appeal No. 1999-2425
Application 08/659,380
would have suggested to one of ordinary skill in the art the
desirability of the modification. See Fritch, 972 F.2d at
1266, 23 USPQ2d at 1783-84. The examiner has not provided
such an explanation. Instead, the record indicates that the
examiner relies solely upon the description of the appellant’s
invention in the specification for a reason to modify the
references so as to arrive at the claimed invention. Thus,
the examiner used impermissible hindsight when rejecting the
claims. See W.L. Gore & Associates v. Garlock, Inc., 721 F.2d
1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983), cert.
denied, 469 U.S. 851 (1984); In re Rothermel, 276 F.2d 393,
396, 125 USPQ 328, 331 (CCPA 1960). Accordingly, we reverse
the examiner’s rejection.
Other Issue
The examiner should consider whether Wentz would have
fairly suggested, to one of ordinary skill in the art, the
kneeler device recited in the appellant’s claims 1 and 11.
Wentz teaches
that the bottom surface “preferably” is slightly convex along
7
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