Appeal No. 2004-0931
Application No. 10/180,355
function properly as a packing seal (see, for example, column 1,
line 46, through column 2, line 2).
In proposing to combine the admitted prior art and Chambers,
the examiner submits that it would have been obvious in view of
Chambers “to modify the [admitted prior art] o-ring of
[appellant’s] Figure 3, having a solid annulus, with a single
continuous, concentric slot extending at right angles
(orthogonal) to the plane from the surface of the annulus in
order to permit compression of the o-ring” (answer, page 5). The
flaw in this rationale, however, is that the admitted prior art
O-ring has no need for a slot to be compressed or deformed as it
already possesses this capability. By the same token, Chambers
discloses the slot only in conjunction with an O-ring which,
unlike the admitted prior art O-ring, is substantially non-
deformable and requires the slot to function as intended. The
only suggestion to combine these disparate teachings in the
manner proposed by the examiner stems from hindsight knowledge
derived from the appellant’s disclosure. The use of such
hindsight knowledge to support an obvious rejection is, of
course, impermissible.
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