Appeal No. 2005-1273 Page 5
Application No. 10/057,619
depositing ink on other portions as suggested by Granzow. The examiner states that
the motivation for doing so would have been to achieve faster printing speed as taught
by Granzow (column 5, lines 12-22).
The appellant argues in the brief and the reply brief that modifying Yashima in
the manner suggested by the examiner would preclude the recording heads of the
Yashima from performing two-pass recording and printing a plurality of inks of different
densities in superposition on the same pixel, thereby defeating a ''characterizing
feature'' of Yashima and rendering Yashima unsatisfactory for its intended purpose.
Because modifying Yashima by Granzow, in the manner suggested by the examiner,
would render Yashima unsatisfactory for its intended purpose, the appellant submits
that there is no suggestion or motivation to make the proposed modification. We agree.
In our view, the only suggestion for modifying Yashima in the manner proposed
by the examiner 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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