Appeal No. 2001-2609 Page 5
Application No. 09/040,798
examiner stems from hindsight knowledge derived from the appellants' 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 we cannot sustain the examiner's rejections
of claims 1 to 44.
REMAND
We remand this application to the examiner for further consideration of the
patentability of the pending claims in light of the teachings of U.S. Patent No. 4,695,055
1
to Newcomb et al. (Newcomb).
Newcomb discloses a dimpled golf ball for use after dark. The ball is made of
translucent plastic and contains in a diametrical hole therein a chemiluminescent light
stick which when activated renders the ball when used in the dark plainly visible in the air
and on the ground. Newcomb teaches (column 1, lines 55-56) that "[o]ne plastic of
which the ball may be made is thermoplastic polyurethane." Newcomb further teaches
(column 1, lines 37-40) that the golf ball "is made of a homogeneous translucent plastic
1This patent was cited by the appellants in the Supplemental Inform ation Disclosure Statement
(Paper No. 8, filed September 22, 1999) and "considered" by the examiner (see Paper No. 19, mailed
October 12, 2001).
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