Appeal No. 2002-2123 Page 5
Application No. 09/197,140`
In our view, it would not have been obvious at the time the invention was made
to a person of ordinary skill in the art to have modified Hollis to arrive at the claimed
subject matter. In that regard, while each of the above-noted modifications to Hollis
may have been obvious to an artisan from the teachings of the applied prior art, the
invention when considered "as a whole" as required by 35 U.S.C. § 103 is not
suggested by the applied prior art. As should be apparent from a reading of the
examiner's rejection, the examiner has completely reworked Hollis' apparatus. The only
possible suggestion for modifying Hollis in the manner proposed by the examiner to
arrive at the claimed subject matter is hindsight knowledge derived from the appellants'
own disclosure.1 It follows that we cannot sustain the examiner's rejections of claims 9
to 11, 13, 14 and 16 to 30 under 35 U.S.C. § 103.
1 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).
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