Appeal No. 96-3132 Page 5
Application No. 08/248,521
zinc, and (2) very little motivation for the selection of zinc
has been provided. 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 weight 68 of Hochstrasser, 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 1 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 claims 1
and 15, or claims 5 and 14 which depend therefrom, under 35
U.S.C. § 103.
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