Appeal No. 2005-2435
Application No. 10/407,498
case for believing that the so-modified device would be inherently
capable of performing the attachment functions defined by the
appellant's independent claims. That is to say, the § 103
rejection under review is deficient in the same manner as the
previously discussed § 102 rejection.
As for the § 103 rejection of claim 6 over Allred in view of
Micro Mark Catalogue, the examiner concludes that:
"[I]t would have been obvious to one of ordinary
skill in the art at the time the invention was made to
modify the holding mechanism of Allred by incorporating a
clamp, as taught by the Micro Mark Catalogue, in order to
more easily and securely removably attach the end of the
safety device to a structure" (Answer, pages 4-5).
We cannot agree. As explained by the appellant, the here applied
references contained no teaching or suggestion for the combination
proposed by the examiner. Indeed, a clamp of the type taught by
Micro Mark Catalogue is plainly incompatible with Allred's teaching
of the manner in which his safety device is to be used. Under
these circumstances, it is reasonably apparent that the examiner's
conclusion of obviousness is based upon impermissible hindsight.
See W. L. Gore & Assocs. 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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