Appeal No. 2004-2131 Page 7
Application No. 10/016,719
been obvious to an artisan as a design choice since the use of multiple spindle drives is
a duplication of parts which is patentable only if unexpected results are discovered
citing to MPEP § 2144.04 and In re Harza 274 F.2d 669, 124 USPQ 378 (CCPA 1960).
There is no per se rule that duplication of parts would have been obvious at the time the
invention was made to a person of ordinary skill in the art; application of such rule is
improper, since it sidesteps the particularized obviousness inquiry required by
35 U.S.C. § 103 and necessarily produces erroneous results. Thus, the examiner's
determination that it would have been obvious to an artisan to use multiple spindle
drives in Bayne has not been supported by any evidence that would have led an artisan
to arrive at the claimed invention.
In our view, the only suggestion for modifying Bayne in the manner proposed by
the examiner to meet the above-noted limitation 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, 4 to 11 and 13 under 35 U.S.C. § 103 is reversed.
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007