Appeal No. 2005-2341 Παγε 11
Application No. 10/420,187
However, this determination has not been supported by any evidence that would have
led an artisan to arrive at the claimed invention.
Thus, it is our view that the only suggestion for modifying Sonehara in the
manner proposed by the examiner to meet the "mounted" limitation 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 that we cannot sustain the examiner's rejections of claims 1 to 25.
Claims 28, 29, 31 to 34, 36 and 37
In the rejection of claims 28, 29, 31 to 34, 36 and 37, the examiner applies
Sonehara and Steinmetz as in the rejection of claims 1 to 25 and further adds thereto
the teachings of Discenzo. In our view, we cannot sustain this rejection for the reason
set forth above with respect to claims 1 to 25.
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