Appeal No. 2002-0602 Page 6
Application No. 09/596,749
All the claims under appeal require a resilient material to be at least partially
positioned in the gap between the plow blade and the brace member. However, this
limitation is not suggested by the applied prior art (i.e., Ciula and Middleton). In that
regard, while Middleton does teach a resilient strip of material cemented or clamped to
the back of the pivotable blade portion 26a which extends through and seals the
opening between it and the constrained blade portion 26b, Middleton does not teach or
suggest modifying Ciula's plow to have a resilient material at least partially positioned in
the gap between the plow blade and the brace member. In our view, the only
suggestion for modifying Ciula in the manner proposed by the examiner to meet the
above-noted limitation 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).
With regard to the examiner's reference (answer, pp. 5-6) as to what is
commonly known in this art we note that such evidence is not before us in this appeal.
Furthermore, a broad conclusory statement regarding the obviousness of modifying a
reference, standing alone, is not "evidence." Thus, when an examiner relies on general
knowledge to negate patentability, that knowledge must be articulated and placed on
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