Appeal No. 1999-2446 Page 11
Application No. 08/705,592
independent claims under appeal. In fact, the advantages of3
utilizing wood fragments as set forth in the claims under
appeal are not appreciated by Stacy.
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
3The examiner references other prior art (i.e., Pine Bark
Mulch) on page 6 of the answer. We note that no rejection
utilizing that prior art is before us in this appeal.
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