Appeal No. 95-2936
Application 07/887,040
that in searching for an incentive for modifying the apparatus of
Marzullo, 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). In this regard, we
particularly find the examiner's reliance on the water
purification system of Muisener to modify the mail folding and
sealing apparatus of Marzullo to be inappropriate. 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 appealed
claims 9 through 12, 18 and 22 through 24 under 35 U.S.C. § 103.
Further basis for not sustaining the examiner's
rejection of independent claim 24 and of claims 9, 11 and 12
which depend from claim 23 is found on page 5 of appellant's
reply brief, wherein it is pointed out that the references
applied by the examiner fail to teach or suggest (1) the use of a
5
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