Appeal No. 2004-1442 Page 7
Application No. 09/308,548
After reviewing the teachings of Li, Laboureau '710, Laboureau '151 and
Hlavacek, we found no reason, absent the use of impermissible hindsight,2 for a person
of ordinary skill in the art at the time the invention was made to have modified the
individual strands of either Li, Laboureau '710 or Laboureau '151 by imparting thereto a
predetermined torsion to the individual strands prior to forming the bundle of strands.
While Hlavacek's sleeve/carrier yarns 5 are given a twist before further processing to
facilitate handling and to minimize fiber breakage, such teaching provides no suggestion
or motivation to have modified the individual axial strands of either Li, Laboureau '710 or
Laboureau '151.
For the reasons set forth above, the decision of the examiner to reject claims 28,
29 and 34 to 36 under 35 U.S.C. § 103 as being unpatentable over Li in view of
Hlavacek is reversed; the decision of the examiner to reject claims 28, 30 and 32 under
35 U.S.C. § 103 as being unpatentable over Laboureau '710 in view of Hlavacek is
reversed; and the decision of the examiner to reject claim 33 under 35 U.S.C. § 103 as
being unpatentable over Laboureau '151 in view of Hlavacek is reversed.
2 The use of hindsight knowledge derived from the appellants' own disclosure to support an
obviousness rejection under 35 U.S.C. § 103 is 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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