Appeal No. 2002-2039 Page 18
Application No. 09/258,712
With regard to the appellants' argument that the simple addition of a second
guide region confounds the need for an accurately moving needle valve, rather than
improving the movement accuracy of the needle valve, we note that such argument is
unpersuasive since it is unsupported by any evidence.6
Likewise, the appellants' contention that virtually all of the hundreds of fuel
injector patents show a single guide for the needle is unpersuasive since Ganser
teaches a needle valve having two guide portions. While conventional wisdom in the
art may be to include only one guide for the needle valve, Ganser goes against such
conventional wisdom by teaching two guides for the needle valve and that teaching is
sufficient as set forth above to render the claimed subject matter obvious to a person of
ordinary skill in the art at the time the invention was made.
Since there is motivation in the applied prior art that would cause a person skilled
in the art to apply the teachings of Ganser to modify the needle valves taught in either
Moncelle or Anderson, the examiner's obviousness conclusion in this case does not
rest upon the teachings of the present invention.7
6 See footnote 2.
7 The use of hindsight knowledge derived from the appellants' own disclosure 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.
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