Appeal No. 2002-1487 Page 11
Application No. 09/404,461
disposed at its distal end and cause it to cut tissue admitted through an opening in the
distal region of the outer member. Krause teaches (column 4, lines 35-38) that "[r]egion
16 is made flexible by the selective removal of portions of material (represented by lines
18 in FIG. 2) from the walls 20 (FIG. 3) of inner tube 12." As shown in figures, the
portions of material removed from the inner member 14 in region 16 does not form a
helical cut.
In this rejection, the examiner determined (answer, p. 4) that it would have been
obvious to form Trott's inner spiral 60 as a tube and then remove portions therefrom to
form a cut in order to simplify the manufacturing process in view of the teachings of
Krause.
The appellants argue that the applied prior art does not suggest the claimed
subject matter. Specifically, the appellants argue that Krause does not suggest
providing Trott's inner spiral 60 with a helical cut. We agree. In our view, the only
suggestion for modifying Trott in the manner proposed by the examiner to meet the
helical cut limitation 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
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