Appeal No. 2004-0610 Page 6
Application No. 09/624,120
to flow through the second transfer passage 18 into the twin valve assembly 5
and (as will be described below) thence to the reservoir 9. Fluid can also flow
from the second working chamber 12 into the first working chamber 11 through
the piston check valve 15. In a rebound motion, the increased pressure in the
first working chamber 11 causes fluid to flow through the first transfer passage
17 into the twin valve assembly 5 and thence to the reservoir 9. The reduced
pressure in the second working chamber 12 draws fluid from the reservoir 9
through the end check valve 16 and into the second working chamber 12.
In our view, the mere fact that Danek teaches a shock absorber having a
valveless piston provides no teaching, suggestion or motivation to a person of ordinary
skill in the art at the time the invention was made to have eliminated Wilke's piston
check valve 15 and its associated function. In that regard, Wilke's piston check valve
15 is necessary, as set forth above, for a proper functioning of his shock absorber. In
our opinion, the only suggestion for modifying Wilke in the manner proposed by the
examiner to arrive at the claimed subject matter 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).
For the reasons set forth above, the decision of the examiner to reject claims 1
to 18 under 35 U.S.C. § 103 is reversed.
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