Appeal No. 2002-1145 Page 5
Application No. 09/335,471
been obvious to one of ordinary skill in the art, at the time of invention, to have
assembled the toroidal continuously variable transmission disclosed by the AAPA using
a sheath to protect the screw threads of the axial member during assembly in light of
the teachings of Kellogg.
The appellant argues that there is no motivation to have combined the applied
prior art in the manner set forth in the rejection to arrive at the claimed subject matter
since the damage caused by the assembly process of the AAPA (see page 7 of the
specification) was not recognized in the prior art. We agree. As set forth above,
patentability under 35 U.S.C. § 103 may be predicated on discovering the cause of a
problem even though, once that cause is known, the solution would have been obvious.
In our view, the only suggestion for modifying the AAPA in the manner proposed by the
examiner to arrive at the claimed method of assembling a toroidal continuously variable
transmission stems from hindsight knowledge derived from the appellant's own
disclosure since the AAPA does not recognize any problem with its assembly process.
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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