Appeal No. 96-2446
Application 08/246,179
references can be combined only if there is some suggestion or incentive to do so." Id.
Here, the prior art contains neither a teaching nor a suggestion to store plural flag groups
which are changed based upon operation of the calculator. Furthermore, the
examiner has provided no motivation as to why it would have been obvious to one of
ordinary skill in the art at the time of the invention to incorporate the teaching of IBM
regarding processing conditional branch instructions and to modify the teachings of
Woods to use the conditional branch instruction to select the appropriate stored flag group
as set forth in claim 1. The examiner has attempted to find the parts of the claimed
invention in rejecting the claims and has not considered the claim as a whole in evaluating
patentability.
Instead, it appears to us that the examiner relied on hindsight in reaching the
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
appellants' specification and claims, to the applied prior art references, and to the
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