Appeal No. 2003-0013
Application No. 09/569,539
spring (46) [having] first and second zones of differing initial
spring constant due to its barrel shape[]. . . .” (answer, page 3).
The examiner concludes that “[t]herefore, it would have been
obvious to one of ordinary skill in the art to modify the springs
(8) of Ayrolles with the barrel shaped springs (46) of Boudreau for
the advantage of allowing the seat to support a wide range of
weights and swinging motions of the seat” (answer, page 3).
Like appellant, we consider that the examiner’s position is
not well founded. First, while it may be true that the Ayrolles
swing could be modified as proposed by the examiner to provide
barrel shaped springs therein, the examiner has identified no
cogent reason in the collective teachings of the applied references
that suggests the desirability, and thus the obviousness, of such a
modification. See In re Mills, 916 F.2d 680, 682, 16 USPQ2d 1430,
1432 (Fed Cir. 1990); In re Gordon, 733 F.2d 900, 902, 221 USPQ
1125, 1127 (Fed. Cir. 1984) (“The mere fact that the prior art
could be so modified would not have made the modification obvious
unless the prior art suggested the desirability of the
modification.”). In our view, the only suggestion for modifying
Ayrolles in the manner proposed by the examiner stems from
impermissible hindsight knowledge derived from appellant’s own
disclosure. This constitutes a first reason necessitating reversal
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