Appeal No. 2001-1661 Page 6
Application No. 09/144,654
The appellant argues that there is no motivation, suggestion or teaching to have
combined the applied prior art in the manner set forth by the examiner. We agree.
In our view, one skilled in the art would not employ either the glass wall of Pearson
or the ball rebounding net of Hogue in front of the tennis practice and training aid of
Pfeilsticker in order to protect the mirror part of the tennis practice and training aid of
Pfeilsticker from damage since Pfeilsticker teaches that the mirror part is made to
withstand the impact of a tennis ball and a glass wall positioned to protect the mirror part
would interfere with the intended use of the tennis practice and training aid of Pfeilsticker
(i.e., a player hitting tennis balls against the tennis practice and training aid of Pfeilsticker).
Thus, it is our opinion that the only suggestion for modifying the tennis practice and training
aid of Pfeilsticker in the manner proposed by the examiner to arrive at the claimed
invention 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 the decision of the examiner to reject claims 22 to 24
under 35 U.S.C. § 103 is reversed.
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