Appeal No. 95-2941 Page 5
Application No. 08/139,616
combined teachings of the applied prior art would not have
suggested the claimed invention. Specifically, it is our
determination that the combined teachings of the applied prior
art would not have suggested the carriage as recited in
independent claims 8 and 15. In that regard, both independent
claims 8 and 15 require the carriage to include (1) a pressing
roller for transferring a two-sided adhesive strip to a web at
the arc of the support roller, and (2) a cutter behind the
pressing roller for cutting through the two-sided adhesive strip
and web. It is our view, after a careful review of the combined
teachings of the applied prior art, that in searching for an
incentive for modifying the winding device of Nowisch, the
examiner has impermissibly drawn from the 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 taught is used against its teacher."
W. L. Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220
USPQ 303, 313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
(1984). Since we have determined that the subject matter of
independent claims 8 and 15 would not have been suggested by the
combined teachings of the applied prior art, it follows that we
will not sustain the examiner's rejection of appealed independent
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