Appeal No. 2002-1250 Page 10
Application No. 09/200,057
We do not agree with the examiner that the combined teachings of the applied
prior art would have suggested the claimed invention to one of ordinary skill in the art.
Specifically, we fail to see any teaching, suggestion or motivation in the applied prior art
to have employed the soccer ball of Mitchell with the head rebounding device of Ryan
as proposed by the examiner (answer, p. 4). In our view, the only suggestion for
modifying Ryan in the manner proposed by the examiner to arrive at the claimed
method of heading a soccer ball 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
the decision of the examiner to reject claims 1, 3, 4, 6 to 9, 18 and 19 under 35 U.S.C.
§ 103 as being unpatentable over Ryan in view of Mitchell and Horn is reversed.
The obviousness rejection utilizing Romero
We will not sustain the rejection of claims 1, 3, 4, 6 to 9, 18 and 19 under
35 U.S.C. § 103 as being unpatentable over Romero in view of Mech Site, Horn and
Rife.
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