Appeal No. 2005-2035 Page 7
Application No. 10/281,417
hydrogen and carbon. Since polyglycol contains oxygen as well as hydrogen and
carbon, polyglycol is not a hydrocarbon. Thus, the claimed hydrocarbon-based oil is not
readable on polyglycol when it used as the basic material for the liquid phase of
Lochner's damping medium.
Second, there is no motivation, suggestion or incentive in the combined
teachings of Dias and Lochner that would have made it obvious at the time the invention
was made to a person having ordinary skill in the art to have utilized Lochner's damping
medium based on polyglycol as Dias' liquid 32. In that regard, Lochner's medium based
on polyglycol and Dias' liquid 32 have distinct uses. Lochner's medium based on
polyglycol is used for damping while Dias' liquid 32 is used to transmit an ultrasonic
wave. In addition, Lochner's damping medium based on polyglycol also includes solids
which would wreak havoc in Dias' ultrasound probe. In our view, the only suggestion for
modifying Dias in the manner proposed by the examiner 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).
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