Appeal No. 2001-2045 Page 8
Application No. 09/360,936
the exception of at some of the connection means being integrally formed between the
various elements to create a film-hinge," and (2) determined that it would have been
obvious to one of ordinary skill in the art to use film hinges rather than rods in
Yamamoto in view of the teachings of Schooley so as to reduce the number of
manufacturing steps since the frame (i.e., bearing unit 20) and the actuating member
(i.e., tilting unit 30) of Yamamoto could be molded simultaneously.
The appellants' position
The appellants argue (brief, pp. 6-8; reply brief, pp. 2-3) that absent the use of
hindsight knowledge derived from the appellants' own disclosure9 there is no teaching,
suggestion, motivation or incentive in the applied prior art for a person of ordinary skill
in the art at the time the invention was made to have modified Yamamoto's switch to
arrive at the claimed invention.
Our position
A critical step in analyzing the patentability of claims pursuant to 35 U.S.C.
9 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).
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