Appeal No. 2001-2611 Page 5
Application No. 08/566,576
that was made by the appellant. See In re Dance, 160 F.3d 1339, 1343, 48 USPQ2d
1635, 1637 (Fed. Cir. 1998); In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127
(Fed. Cir. 1984). The motivation, suggestion or teaching may come explicitly from
statements in the prior art, the knowledge of one of ordinary skill in the art, or, in some
cases the nature of the problem to be solved. See In re Dembiczak, 175 F.3d 994, 999,
50 USPQ2d 1614, 1617 (Fed. Cir. 1999).
In this case, we agree with the appellant's argument (brief, pp. 5-9; reply brief, pp. 2-
3 and 7-8) that one skilled in the art would not have been motivated to modify the front relief
surfaces/flanks of either the Friedman or the Satran insert based upon the front relief
surface of Carl. In our view, the only suggestion for modifying either the Friedman or the
Satran insert 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 we cannot sustain the examiner's rejections of claims 1, 3 to 9,
13 and 15 to 20.
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