Appeal No. 2002-2084 Page 9
Application No. 09/016,740
matter of the claims under appeal obvious at the time the invention was made to a
person of ordinary skill in the art. Accordingly, we cannot sustain the examiner's
rejection of appealed claims 1 to 6, 8 to 13 and 15 to 17 under 35 U.S.C. § 103.
All the claims under appeal require the fifth bore hole to be linearly aligned with
the first and third bore holes and the sixth bore hole to be linearly aligned with the
second and fourth bore holes. However, these limitations are not suggested by the
applied prior art (i.e., Van Valkenburgh, Loeber, Powell and Ahonen). In that regard,
while Loeber does teach lightening holes, Loeber would not have suggested providing
linearly aligned2 lightening holes in Van Valkenburgh's support members 12, 14, 16 and
18. At best, Loeber may have suggested providing lightening holes in Van
Valkenburgh's support members 16 and 18.
In our view, the only suggestion for modifying Van Valkenburgh 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
2 We see no teaching in Loeber that the lightening holes 64 in one T-beam 28 would be linearly
aligned with the lightening holes 64 in the other T-beam 28.
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