Appeal No. 2006-0004 Παγε 8
Application No. 09/497,359
The appellants argue throughout the brief and reply brief that there is no
motivation to combine the applied prior art so as to arrive at the claimed subject matter.
We agree. This is due to the disparate nature of the applied prior art. In that regard,
while Miller and Rodosta are both broadly elevators, they are each concerned with
vastly different types of elevators. In our view, the only suggestion for modifying Miller
in the manner proposed by the examiner to arrive at the subject matter under appeal
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).
A critical step in analyzing the patentability of claims pursuant to 35 U.S.C.
§ 103 is casting the mind back to the time of invention, to consider the thinking of one of
ordinary skill in the art, guided only by the prior art references and the then-accepted
wisdom in the field. See In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617
(Fed. Cir. 1999). Close adherence to this methodology is especially important in cases
where the very ease with which the invention can be understood may prompt one "to fall
victim to the insidious effect of a hindsight syndrome wherein that which only the
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