Appeal No. 2005-0189 Page 8
Application No. 09/683,997
In our view, the only suggestion for modifying Naoki 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). It follows that we cannot sustain the
examiner's rejection of claim 1. Accordingly, the rejection of
claim 1 and claims 2-4 and 7-9, which depend therefrom, is
reversed.
Turning to claims 5 and 6, we cannot sustain the rejection
of these claims because Kilgore does not make up for the
deficiency of the basic combination of Naoki and Nishio.
Accordingly, the rejection of claims 5 and 6 under 35 U.S.C.
§ 103(a) is reversed.
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