Appeal No. 2000-0209 Page 10
Application No. 08/693,985
"teachings of references can be combined only if there is some
suggestion or incentive to do so." Id. Here, it is our
determination that the prior art contains none. In that
regard, we see no teaching, suggestion, or motivation in the
applied prior art for modifying Snyder to provide a pivot
means above his axle. At best, the teachings of Hayes are
suggestive of providing an overload spring pivotally connected
below Snyder's axle.
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
. . . about the claimed invention and cast the mind back to
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