Appeal No. 2004-1246
Application No. 09/960,948
teach or suggest, in my opinion, using that overshell on Kemmerer's
handle 32.
It is my belief, that the only suggestion for modifying
Kemmerer’s handle 32 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). It follows that I would reverse the decision of the
examiner to reject claims 1-3, 5, 6, 8, 10, 12-14, 16, 17 and 19
under 35 U.S.C. § 103(a) as being unpatentable over Kemmerer in
view of Beals.
19
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