Appeal No. 2003-1271 Page 6
Application No. 08/901,713
In the rejections under 35 U.S.C. § 103 before us in this appeal (final rejection,
pp. 2-8), the examiner (1) ascertained that Lindsay did not teach a pocket including a
resilient opening, the size of the opening being variable depending upon the extent to
which the resilient opening is extended; and (2) concluded that it would have been
obvious in view of the teachings of Baumgartner alone or the teachings of both
Baumgartner and Yoo to have provided elastic bands in the openings of Lindsay's
pockets 26 and 28 to resiliently retain items in the pockets 26 and 28.
The appellant argues that the applied prior art does not suggest the claimed
subject matter. We agree. In that regard, while both Baumgartner and Yoo teach the
use of a resilient opening pocket, we fail to discern any teaching, suggestion or
motivation therein which would have been obvious at the time the invention was made
to a person of ordinary skill in the art to have modified Lindsay's tool holder to include a
resilient opening pocket. In our view, the only suggestion for modifying Lindsay in the
manner proposed by the examiner in the rejections before us in this appeal 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., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir.
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