Appeal No. 2003-1924 Page 5
Application No. 08/554,533
Second, it is our opinion that there is sufficient suggestion, teaching or motivation
in the applied prior art to arrive at the subject matter of claim 16 as set forth above without
the use of 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). Motivation, suggestion or teaching may come explicitly from statements in the
prior art, the knowledge of one of ordinary skill in the art, or, in some cases the nature of
the problem to be solved. See In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614,
1617 (Fed. Cir. 1999). In addition, the teaching, motivation or suggestion may be implicit
from the prior art as a whole, rather than expressly stated in the references. See WMS
Gaming, Inc. v. International Game Tech., 184 F.3d 1339, 1355, 51 USPQ2d 1385, 1397
(Fed. Cir. 1999). In that regard, it must be borne in mind that where two known
alternatives are interchangeable for their desired function, an express suggestion of the
desirability of the substitution of one for the other is not needed to render such substitution
obvious. See In re Fout, 675 F.2d 297, 301, 213 USPQ 532, 536 (CCPA 1982); In re
Siebentritt, 372 F.2d 566, 568, 152 USPQ 618, 619 (CCPA 1967).
Lastly, in making our determination of the obviousness of the subject matter of claim
16 from the combined teachings of Murphy and McLeod, this panel of the Board did not
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