Appeal No. 2003-0388 Page 5
Application No. 09/499,124
between the rearward portion of the first skid plate and the trailer frame can be adjusted
and fixed. However, these limitations are not suggested by the applied prior art. In that
regard, while Eggleston does teach a first skid plate attached to the trailer frame so that
the vertical separation between the rearward portion of the first skid plate and the trailer
frame can be adjusted and fixed, Eggleston does not teach or suggest making the
vertical separation between the forward portion of the first skid plate and the trailer
frame adjustable. To supply this omission in the teachings of Eggleston, the examiner
relied on the teachings of Des Roches to render that difference obvious to an artisan.
However, Des Roches is directed not to an adjustable skid plate on a boat trailer but to
adjustable guide rails on a boat trailer to assist in unloading a boat from the trailer into
the water and loading a boat from the water onto the trailer. In our view, the only
suggestion for modifying Eggleston in the manner proposed by the examiner to meet
the above-noted limitations stems from hindsight knowledge derived from the
appellant's own disclosure, not the teachings of the applied prior art.2 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 1 to 7.
2 We have also reviewed the Herndon reference additionally applied in the rejection of claim 5 but
find nothing therein which makes up for the deficiencies of Eggleston and Des Roches discussed above.
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