Appeal No. 2004-0953 Page 8
Application No. 09/215,593
prior art suggested the desirability of the modification. See In
re Gordon, 773 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir.
1984). In sum, we find that to arrive at appellants’ invention,
the examiner has started with Smith's disclosure of delivering a
portable document format to a server, and has added the
additional references in a hindsight reconstruction of
appellants' invention using appellants’ claims as a roadmap for
combining the teachings of the prior art. 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). It follows that we cannot sustain the examiner's
rejections of claims 1-17 and 19-22.
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