Appeal No. 2003-1288 Page 4
Application No. 09/338,158
(3) determined that Lewis teaches "the basic concept of inserting coupons onto
cartons;" and (4) concluded that it would have been obvious to one of ordinary skill in
the art at the time of the invention to provide Roetter with coupon inserting means as
taught by Lewis to insert a desired product.
The rejection fails to set forth a prima facie case of obviousness with respect to
the claims under appeal since the teachings of Lewis fail to suggest the stated
shortcomings of Roetter. The examiner ascertained that Roetter does not show
supplying coupons into a particular location as claimed and determined that Lewis
teaches inserting coupons onto cartons. In our view, absent the use of impermissible
hindsight,1 the combined teachings of Roetter and Lewis would have, at best,
suggested placing coupons separated from a web of coupons as taught by Roetter
onto a carton as taught by Lewis. The combined teachings of Roetter and Lewis do not
teach or suggest supplying coupons into a particular location as claimed. Accordingly,
the decision of the examiner to reject claims 5 to 12 under 35 U.S.C. § 103 is reversed.
1 The use of hindsight knowledge derived from the appellant's own disclosure to support an
obviousness rejection under 35 U.S.C. § 103 is 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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