Appeal No. 96-0656
Application 08/099,277
language of claim 7 discussed above.
Furthermore, it appears to us that the examiner relied on hindsight in reaching his
obviousness determination. However, our reviewing court has said, "[t]o imbue one of
ordinary skill in the art with knowledge of the invention in suit, when no prior art reference or
references of record convey or suggest that knowledge, is to fall victim to
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, 312-13 (Fed. Cir. 1983).
In reaching our decision in this appeal, we have given careful consideration to the
appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the Examiner. Upon evaluation of all
the evidence before us, it is our conclusion that the evidence adduced by the examiner is
not sufficient to establish a prima facie case of obviousness with respect to
claim 7. Accordingly, we will not sustain the examiner's rejection of claim 7 under 35
U.S.C. § 103.
Since all the limitations of independent claim 7 are not suggested by the applied
prior art, we cannot sustain the examiner's rejection of appealed claim 8 through 11 which
depends therefrom, under 35 U.S.C. § 103.
7
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