Appeal No. 2005-0326 Page 6
Application No. 10/081,376
In our view, the applied prior art provides no teaching, suggestion or incentive
that would have made it obvious at the time the invention was made to a person of
ordinary skill in the art to have modified Schade so as to arrive at the claimed invention.
The mere fact that the prior art could be modified in the manner set forth in the rejection
does not make such a modification obvious unless the 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 this case, there is no such suggestion for the reasons set
forth by the appellants in their briefs. The only possible suggestion for modifying
Schade in the manner proposed by the examiner to arrive at the claimed invention
would stem 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 claim 1,
and claims 2, 3 and 13 dependent thereon, under 35 U.S.C. § 103 is reversed.
We have also reviewed the references to Lande and Kadota but find nothing
therein which makes up for the deficiencies of Schade and Dobell discussed above
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