Appeal No. 97-2625
Application No. 08/118,925
suggestion supporting the combination" (footnote omitted).
See ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572,
1577, 221 USPQ 929, 933 (Fed. Cir. 1984). Here, the prior art
contains none. As 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), cert. denied, 469 U.S. 851 (1984).
Thus, the examiner’s conclusion that the differences
between the subject matter recited in claims 1 and 13 and the
applied prior art are such that the subject matter as a whole
would have been obvious at the time the invention was made to
a person having ordinary skill in the art is not well founded.
Accordingly, we will not sustain the standing 35 U.S.C. § 103
rejection of these claims.
Claims 2 through 12, dependent on claim 1, and claim 14,
dependent on claim 13, contain all of the limitations of their
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