Appeal No. 2005-1318 Page 11
Application No. 10/191,198
In our view, this is a classic case of an examiner utilizing hindsight knowledge
derived from the appellants' own disclosure to make a rejection. Clearly, the teachings
of Galomb to provide a top seal for a flexible plastic package would not have provided
any motivation, suggestion or incentive for a person having ordinary skill in the art at the
time the invention was made to have modified the paper cup of the APA to have a
transverse seal at the top of the cup. Likewise, the teachings of Galomb to provide a
flexible plastic package would not have provided any motivation, suggestion or incentive
for a person having ordinary skill in the art at the time the invention was made to have
modified the paper cup of the APA to be made from flexible plastic material. The only
conceivable suggestion for modifying the paper cup of the APA in the manner proposed
by the examiner stems from impermissible hindsight knowledge derived from the
appellants' own disclosure.
For the reasons set forth above, the decision of the examiner to reject claims 1 to
4, 6 to 9 and 14 under 35 U.S.C. § 103 as being unpatentable over the APA in view of
Galomb is reversed.
CONCLUSION
To summarize, the decision of the examiner to reject claims 1 to 4, 6 to 9 and 14
under 35 U.S.C. § 103 is reversed.
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