Appeal No. 2004-1321 Page 11
Application No. 10/002,633
rejection (answer, p. 4). The only possible suggestion for modifying Cermak in the
manner proposed by the examiner 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).
For the reasons set forth above, the decision of the examiner to reject claims 1,
2, 5 and 6 under 35 U.S.C. § 103 as being unpatentable over Cermak in view of
Ashiwake is reversed.
Likewise, after reviewing the combined teachings of Livingood and Wettstein
there is no suggestion to have modified Livingood to arrive at the claimed subject
matter as set forth in this rejection (answer, pp. 4-5). Once again, the only possible
suggestion for modifying Livingood in the manner proposed by the examiner stems from
hindsight knowledge derived from the appellants' own disclosure.
For the reasons set forth above, the decision of the examiner to reject claims 1,
2, 5 and 6 under 35 U.S.C. § 103 as being unpatentable over Livingood in view of
Wettstein is reversed.
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