Appeal No. 2005-1246 Page 6
Application No. 09/776,147
In the answer, the examiner stated (p. 4) that Goddard implies the use of
dissimilar metals in that the metal 12 is described as a fine metal (e.g., aluminum or
silver) and the fishhook is inherently a metal (e.g., carbon steel or stainless steel).
Then, the examiner explained why Goddard's body forming mass 10 constitutes an
nonconductive insulating layer.
The appellant argues that absent the use of hindsight knowledge derived from
the appellant's own disclosure1 the applied prior art does not suggest the claimed
subject matter. We do not agree.
In our view, the teachings of Goddard would have made it obvious at the time the
invention was made to a person having ordinary skill in the art to have: (1) made the
fishhook of Goddard from either carbon steel or stainless steel since making fishhooks
from these materials was well known in the art; (2) made the strip 12 of Goddard from
aluminum, a well known fine metal2; and (3) made the body forming mass 10 of
Goddard from a nonconductive insulating material. This modified bait of Goddard would
1The 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).
2Neither carbon steel or stainless steel is a fine metal.
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