Appeal No. 2004-1088 Page 6
Application No. 09/805,202
The examiner has not ascertained the correct differences between claim 1 and
McWilliams. Based on our analysis and review of McWilliams and claim 1, it is our
opinion that the differences are (1) the mechanically extendable section being
supported in a cantilever fashion by the support structure; and (2) the user interface
section being supported in a cantilever fashion by the mechanically extendable section.
With regard to these differences, we reach the conclusion that there is no
suggestion, teaching or motivation in the combined teachings of McWilliams and Weir
for a person of ordinary skill in the art at the time the invention was made to have
modified McWilliams to arrive at the subject matter of claim 1. In that regard, while
Weir does show a cantilevered conveyor, it is our opinion that Weir would not have
suggested modifying McWilliams by omitting the wheel assembly 46 and then mounting
the loader head 58 to the forward end of conveyor section 110. In our view, the only
suggestion for modifying McWilliams 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).
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