Appeal No. 2003-0672 Page 9
Application No. 09/151,886
motivation, suggestion or teaching of the desirability of making the specific combination
that was made by the appellant. See In re Dance, 160 F.3d 1339, 1343, 48 USPQ2d
1635, 1637 (Fed. Cir. 1998); In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127
(Fed. Cir. 1984).
In our view, the only suggestion for modifying the applied prior art in the manner
proposed by the examiner to arrive at the claimed invention stems from hindsight
knowledge derived from the appellant's 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., supra.
It follows that we cannot sustain the examiner's rejections of claims 1, 3 to 6, 9 to 12,
16, 18 to 21, 24 to 27, 31, 33 to 36 and 39 to 42.
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