Appeal No. 2002-0993 Page 19
Application No. 09/368,781
the art to have modified Root's inserts (i.e., cutting-plates H) to have cutting edges of
different lengths4, it is our view that the only possible suggestion for modifying Root in
the manner proposed by the examiner to meet the above-noted limitations 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 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).
Since the subject matter of claim 1 is not suggested by Root for the reasons set
forth above, the decision of the examiner to reject claim 1, and claims 2 to 5, 8 to 11
and 14 dependent thereon, under 35 U.S.C. § 103 is reversed.
The obviousness rejection of claims 15, 16, 19, 20, 22 to 25, 27 and 28
We will not sustain the rejection of claims 15, 16, 19, 20, 22 to 25, 27 and 28
under 35 U.S.C. § 103.
4 The appellants statement in Paper No. 9 that the variations of the inserts shown in Figures 8-10
are not separate inventions is not an admission that inserts having cutting edges of different lengths would
have been obvious from inserts having cutting edges of equal lengths.
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