Appeal No. 2005-0516 Page 8
Application No. 10/199,803
Appellant's "top support bar." Eisele's horizontal rail 6 cannot be both a "top
support bar" and a "protective guard" secured over the top support bar.
After reviewing the teachings of the Admitted Prior Art and Eisele, it is our
opinion that there is no teaching, suggestion or motivation therein that would have made
it obvious at the time the invention was made to a person having ordinary skill in the art
to have modified the Admitted Prior Art so as to arrive at the invention recited in claim 1.
The appellant is correct that Eisele does not disclose providing a "protective guard" over
the "top support bar" of a fence. In our view, Eisele's tubular horizontal upper rail 6 is
not sufficiently similar to the Admitted Prior Art's protective guard 52 so to have
suggested to a person having ordinary skill in the art to provide first and second
attachment flanges to the Admitted Prior Art's protective guard 52.
In our view, the only suggestion for modifying the Admitted Prior Art in the
manner proposed by the examiner to arrive at the subject matter of claim 1 stems from
hindsight knowledge derived from the appellant's 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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