Ex parte MILLARD - Page 14




          Appeal No. 1998-1928                                      Page 14           
          Application No. 08/543,153                                                  


          so."  Id.  Here, the prior art contains none.  In fact, the                 
          advantages of utilizing "opposed surfaces inclined relative to              
          the axis of the ring member/seal body" are not appreciated by               
          the prior art applied by the examiner.                                      


               Instead, it appears to us that the examiner relied on                  
          hindsight in reaching his obviousness determination.  However,              
          our reviewing court has said, "To 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).  It is essential                  
          that "the decisionmaker forget what he or she has been taught               
          at trial about the claimed invention and cast the mind back to              
          the time the invention was made . . . to occupy the mind of                 
          one skilled in the art who is presented only with the                       
          references, and who is normally guided by the then-accepted                 
          wisdom in the art."  Id.  Since the limitation "opposed                     







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