Appeal No. 2004-1076 Page 5
Application No. 09/684,893
formed with a portion of a transfer case housing apart from a separate second transfer
case housing portion which together are connected to form a complete housing. The
unitary arrangement of Kondoo eliminates the ability to separately install the engine oil
pan and the transfer case assembly, a noted benefit of the appellant's invention. The
teachings of Kusukawa provide no motivation or suggestion for a person of ordinary skill
in the art to have modified the unitary arrangement of Kondoo to have arrived at the
subject matter of claims 1, 6 and 7. In our view, the only suggestion for modifying
Kondoo in the manner proposed by the examiner to arrive at the claimed invention
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, 6
and 7 under 35 U.S.C. § 103 is reversed.
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