Appeal No. 2003-0279 Page 6
Application No. 09/644,795
In our opinion there is no suggestion, motivation or incentive for a person of
ordinary skill in the art at the time the invention was made to have modified the
Admitted Prior Art based on the teachings of Tani to arrive at the claimed subject
matter. In that regard, while Tani does have a curved inward protrusion 37 protruding
from the edge of the side walls 40, 41 of the mask frame 38, we fail to discern any
rationale as to why such a curved inward protrusion would have been applied to the
non-curved flange portions of the support members 11, 12 of the Admitted Prior Art.
This is especially true due to the disparate nature of the Tani's mask frame 38 from the
Admitted Prior Art's tension frame 10. In our view, the only suggestion for modifying the
Admitted Prior Art in the manner proposed by the examiner to arrive at the claimed
subject matter 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). It follows that we cannot sustain the
examiner's rejections of claims 5 to 15.
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