Appeal No. 2003-1639 Page 6
Application No. 09/496,220
determined that those differences would have been obvious at the time the invention
was made to a person of ordinary skill in the art. Accordingly, we find that the examiner
has not established a prima facie case of obviousness with respect to the claims under
appeal.
Moreover, we see no suggestion or teaching in the teachings of Shiraiwa and
Garrett for a person of ordinary skill in the art at the time the invention was made to
have modified Shiraiwa in the manner proposed by the examiner in the rejection before
us in this appeal. While it may be true that Shiraiwa could be so modified, the mere
fact that the prior art could be modified in that manner does not make such a
modification obvious unless the prior art suggested the desirability of the modification.
See In re Gordon, 773 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). In our
view, the only suggestion for modifying Shiraiwa in the manner proposed by the
examiner stems from hindsight knowledge derived from the appellants' 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. 1983),
cert. denied, 469 U.S. 851 (1984).
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