Appeal No. 2005-0341 Page 6
Application No. 09/977,409
However, this determination has not been supported by any evidence that would have
led an artisan to arrive at the claimed invention. Under 35 U.S.C. § 103, the examiner
must establish why it would have been obvious at the time the invention was made to a
person having ordinary skill in the art to have modified Nikolaus to arrive at the claimed
subject matter. This the examiner has not done. Instead, the examiner determined that
the appellants had not disclosed that having the channel extend completely around the
circumference solves any stated problem or is for any particular purpose, and therefore
not a patentable difference. Such is not the standard under 35 U.S.C. § 103.
In our view, the only possible suggestion for modifying Nikolaus in the manner
proposed by the examiner to meet the above-noted limitation stems from hindsight
knowledge derived from the appellants' own disclosure. In fact, the examiner’s
reference to the appellants’ specification in the obviousness determination quoted
above makes it clear to us that the examiner has relied on 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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