Appeal No. 2004-0746 Page 8
Application No. 09/163,588
was made to a person of ordinary skill in the art to have modified Ross so as to arrive at
the claimed subject matter (i.e., that the activation request by the user include a vehicle
indicator and a location indicator).
In our view, the only suggestion for modifying Ross in the manner proposed by
the examiner to arrive at the claimed subject matter 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, 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
11, 13, 14, 16 to 23, 27 to 32, 35 to 39 and 41 to 55 under 35 U.S.C. § 103 as being
unpatentable over Ross in view of Bolger is reversed.
CONCLUSION
To summarize, the decision of the examiner to reject claims 1 to 11, 13, 14, 16 to
23, 27 to 32, 35 to 39 and 41 to 55 under the judicially created doctrine of double
patenting over claims 1-30 of copending Application No. 09/395,497 is affirmed; the
decision of the examiner to reject claims 1 to 11, 13, 14, 16 to 23, 27 to 32, 35 to 39 and
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