Appeal No. 1999-1765 Page 24
Application No. 08/839,193
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.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1, 10 and 11 under 35 U.S.C. § 112, second paragraph is
reversed; the decision of the examiner to reject claims 1 and
12 under 35 U.S.C. § 103(a) as being unpatentable over Jabsen
is reversed; the decision of the examiner to reject claim 12
under 35 U.S.C.
§ 103(a) as being unpatentable over Nylund and Jabsen is
reversed; the decision of the examiner to reject claims 1, 10,
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