Appeal No. 2002-1267 Page 5
Application No. 09/333,928
The appellant argues throughout both briefs that the applied prior art does not
suggest the claimed subject matter. Specifically, the appellant argues that there is no
motivation or suggestion in the applied prior art to have included a hardened steel liner
in the recesses 105 of Spada and that Spada's recesses 105 are not active surfaces
shaped to deform a blank. We agree. In our view, Focke's teaching of a folding
mandrel 13 made from a high-alloy rust-resistant spring-steel sheet provides no
teaching, suggestion, or motivation for a person of ordinary skill in the art to have lined
Spada's recesses 105. Moreover, there is no disclosure in Spada that his recesses 105
are active surfaces shaped to deform a blank. In fact, Spada teaches (column 1, lines
17-30) that wrappers and blanks are folded by stationary folding means and movable
folding means distributed in predetermined positions for each folding step around the
periphery of the wheels with sockets/recesses which is mounted so as to rotate, in
predetermined steps. Thus, the only possible suggestion for modifying Spada to arrive
at the claimed invention stems from hindsight knowledge derived from the appellant's
own disclosure.3 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).
3 Spada does not anticipate claim 1 for the reasons set forth by the appellant in the reply brief
(pp. 1-2).
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007