Appeal No. 2004-2291 Page 9
Application No. 10/318,506
between said spaced apart permanent magnets ... the magnetic flux of spaced apart
permanent magnets.'' The examiner then concluded that it would have been obvious to
one of ordinary skill in the art at the time the invention was made to have modified
Mutaguchi's apparatus with magnet means that consist of permanent magnets and flux
steering magnets such as taught by Hazelton in order to enhance the magnetic flux
advantageously as taught by Hazelton.
The appellants argue that the applied prior art does not suggest the subject
matter of claims 1 to 20. We agree. Hazelton is directed to magnet arrays for linear
motors. We have reviewed the disclosure of Hazelton but find nothing therein which
would have made it obvious at the time the invention was made to a person of ordinary
skill in the art to have modified Mutaguchi's vibration damping apparatus so as to arrive
at the subject matter of claims 1 to 20. In our view, the only suggestion for modifying
Mutaguchi 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).
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