Appeal No. 2003-0717 Page 7
Application No. 09/549,118
In our view, the only suggestion for modifying Koenig in the manner proposed by
the examiner to meet the above-noted limitations 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).
Since Koenig is not suggestive of the subject matter recited in claims 1, 12, 20,
23 and 26 for the reasons set forth above, the decision of the examiner to reject claims
1, 12, 20, 23 and 26, and claims 2 to 11, 13 to 19, 21, 22, 24 and 25 dependent
thereon, under 35 U.S.C. § 103 is reversed.3
3 We have also reviewed the Brady reference additionally applied in the rejection of claims 10 and
17 and the Masuzawa reference applied in the rejection of claims 11, 19 and 25 but find nothing therein
which makes up for the deficiencies of Koenig discussed above regarding claims 1, 12, 20, 23 and 26.
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