Appeal No. 2002-1233 Page 7
Application No. 09/187,138
into and projecting from the backing as taught by Fritsch. We do not agree. In that
regard, we fail to find any teaching, suggestion or motivation in the teachings of the
applied prior art for an artisan to have modified either the cleaning brush 4e of Inoue or
the cleaning brush 47 of Saito to be a cleaning pad as recited in the claims under
appeal. While Fritsch's brushes 91 and 92 are clearly cleaning pads, Fritsch does not
teach or suggest using the brushes 91 and 92 (i.e., cleaning pads) to clean a
transducer head. Thus, it is our view that the applied prior art would not have made it
obvious at the time the invention was made to a person of ordinary skill in the art to
have modified either the cleaning brush 4e of Inoue or the cleaning brush 47 of Saito to
be a cleaning pad as recited in the claims under appeal. In our view, the only
suggestion for modifying either Inoue or Saito in the manner proposed by the examiner
to arrive at the claimed invention 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).
For the reasons set forth above, the decision of the examiner to reject claims 2,
4, 5 and 7 to 13 under 35 U.S.C. § 103 as being unpatentable over Inoue in view of
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