Appeal No. 2005-1980 Page 6
Application No. 10/373,385
been obvious to one of ordinary skill in the art at the time of the invention to provide
Lencoski with laterally spaced apart feeding/fixing elements as taught by Waechter as
an alternative design choice to fold spaced apart sections of the workpiece.
The appellant argues that the applied prior art does not suggest the subject
matter of claims 1 and 31. We agree. In our view, the teachings of Waechter would not
have made it obvious at the time the invention was made to a person having ordinary
skill in the art to have modified Lencoski so as to arrive at the claimed subject matter. In
that regard, Waechter's folding members 33 used to fold a cardboard blank into a
hinged-lid packet for cigarettes would not have provided any suggestion, motivation or
incentive for an artisan to have modified the cushioning conversion machine of Lencoski
as set forth in the rejection under appeal.
The only possible suggestion for modifying Lencoski in the manner proposed by
the examiner to arrive at the claimed subject matter 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). It follows
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