Appeal No. 95-2264
Application 08/125,750
modify the integrally molded body or housing therein, with its curved coated mirror
surface (38), in the manner proposed by the examiner so as to arrive at the mirror
assembly as defined in appellant's claims 21 and 22 on appeal. It is our view that in
searching for an incentive for modifying the auxiliary mirror assembly of Bloom the
examiner has impermissibly drawn from appellant's own teachings and fallen victim to
what our reviewing Court has called "the insidious effect of a hindsight syndrome
wherein that which only the inventor has taught is used against its teacher." W. L.
Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 313
(Fed. Cir. 1983). Since we have determined that the examiner's conclusion of
obviousness is based on a hindsight reconstruction using appellant's own disclosure as
a blueprint to arrive at the claimed subject matter, it follows that we will not sustain the
examiner's rejection of independent claims 21 and 22 under 35 U.S.C. § 103, or that of
claims 5 through 9, 11 through 20 which depend therefrom.5
The decision of the examiner to reject claims 5 through 9 and 11 through 22
under 35 U.S.C. § 103 is reversed.
REVERSED
5As to the examiner’s reliance on the Aikawa et al. reference (answer, pages 7-
8), we direct attention to In re Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3
(CCPA 1970), cited in § 706.02(I) of the Manual of Patent Examining Procedure
(M.P.E.P.).
5
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