Appeal No. 2003-0292 Page 9
Application No. 09/584,032
component; and (3) directing the shot peening particles against the component, and
depositing the sacrificial metal coating on an outer surface of the component.
Determination of obviousness
The examiner determined (answer, p. 4) that in view of the teachings of Babecki
it would have been obvious at the time the invention was made to a person of ordinary
skill in the art to have (1) coated Louis' carrier particles with zinc and (2) housed Louis'
shot peening equipment in a chamber.
The appellants argue throughout both briefs that there is no motivation in the
applied prior art to have modified Louis to arrive at the claimed method. We agree.
In our view, the only suggestion for modifying Louis in the manner proposed by
the examiner to meet the above-noted limitations stems from hindsight knowledge
derived from the appellants' own disclosure.1 While Louis teaches the use of shot
peening equipment to perform his method, it is not clear from the teachings of Louis that
the coated carrier particles ejected from such shot peening equipment would have
sufficient force to actually peen the article being coated by Louis' method. In any event,
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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