Appeal No. 2002-2023 Paper 31
Application No. 08/689,526 Page 16
The examiner may establish a case of prima facie obviousness based on a
combination of references "only by showing some objective teaching in the prior art or
that knowledge generally available to one of ordinary skill in the art would lead that
individual to combine the relevant teachings of the references." In re Fritch, 972 F.2d
1260, 1265, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992). The fact that the prior art could
have been modified in a manner consistent with appellant's claims would not have
made the modification obvious unless the prior art suggested the desirability of the
modification. In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).
In our view, the only suggestion for modifying Kanamaru in the manner proposed by the
examiner to meet the claimed method step of and apparatus/program product means
for "providing predetermined pointer movement control actions responsive to the
compared pointer movement line with the barrier including the steps of ... " 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 e.g., W.L. Gore and Assoc., Inc. v. Garlock, Inc., 721 F.2d
1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
Therefore, for the reasons set forth above, the decision of the examiner to reject
claims 1-3, 6-10 and 13-16 under 35 U.S.C. § 103(a) as being unpatentable over
Kanamaru in view of Keyson and McCambridge is reversed.
IX. Conclusion
To summarize, the decision of the examiner to reject claims 1-3, 6-10 and 13-16
under 35 U.S.C. § 103(a) as being unpatentable over Kanamaru in view of Keyson and
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