Appeal No. 2004-0193 Page 10
Application No. 09/165,272
utilizer machine. The magazine 4 comprises a shaft 7 for supporting the reels through
their tubular spindle, and at least two support elements 5 and 6 for the shaft which can
be removed one at a time from this latter under the control of respective mutually
independent operating means, in such a manner as to enable the reels to slide towards
the reel carrier.
In the rejection under 35 U.S.C. § 103 before us in the appeal, the examiner
(third Office action, p. 4) ascertained that Riccardo "fails to teach two parallel guide
members along the conveying path for one article" and concluded that "[i]t would have
been obvious to one of ordinary skill in the art at the time the invention was made to
provide two guide members instead of one in order to accommodate a different shape
(a wider article which would require two guide members for more stability) article being
conveyed, since it has been held that mere duplication of the essential working parts of
a device involves only routine skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955)."
With respect to claim 15, the appellant argues (supplemental brief, pp. 10-11)
that the examiner's proposed modification of Riccardo to have two parallel guide
members is based on hindsight knowledge derived from the appellant's own disclosure.2
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).
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