Appeal No. 2005-1011 Page 12
Application No. 09/921,588
In our view, the only suggestion for modifying Kimura in the manner proposed by
the examiner to arrive at the claimed invention 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 claims 1 to
25, 30 to 33 and 35 to 39 under 35 U.S.C. § 103 as being unpatentable over Kimura in
view of Nagahara is reversed.
Claims 26, 27 and 34
We have reviewed the references to Winebarger and Kennedy additionally
applied in the rejection of claims 26, 27 and 34 but find nothing therein which makes up
for the deficiencies of Kimura and Nagahara discussed above. Accordingly, the
decision of the examiner to reject claims 26, 27 and 34 under 35 U.S.C. § 103 is
reversed.
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