Appeal No. 2005-0948 Page 14
Application No. 09/922,938
in Figure 1 does not support the longitudinal end of the Iathe bed assembly remote from
the base 11.
In our view, the teachings of Gray do not provide the necessary suggestion or
motivation 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 McCormack so as to arrive at the
claimed invention. The only possible suggestion for modifying McCormack in the manner
proposed by the examiner to meet the second base unit 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), cert. denied, 469 U.S. 851 (1984).
For the reasons set forth above, the decision of the examiner to reject claim 12
under 35 U.S.C. § 103 is reversed.
Claims 14, 16, 18 and 19
We will not sustain the rejection of claims 14, 16, 18 and 19 under 35 U.S.C. § 103
as being unpatentable over McCormack in view of Caddaye and Hardy.
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