Appeal No. 2000-1300
Application 08/853,581
control the pump (11) or valve (13) and thus the amount of foam
or other chemicals added to the water stream.
In our opinion, in searching for an incentive for modifying
the gas mixing apparatus of Chapman, the examiner has
impermissibly drawn from appellants' own teachings regarding the
deficiencies of the prior art. In this regard, it is clear that
the examiner has fallen victim to what our reviewing Court has
called "the insidious effect of a hindsight syndrome wherein
that which only the inventor has taught is used against its
teacher." W. L. Gore & Associates,
Inc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 313
(Fed. Cir. 1983). Since it is our determination that the
teachings and suggestions found in Chapman and McLoughlin would
not have made the subject matter as a whole of independent
claims 1 and 13 on appeal obvious to one of ordinary skill in
the art at the time of appellants’ invention, we must refuse to
sustain the examiner’s rejection of those claims under 35 U.S.C.
§ 103(a). It follows that the examiner's rejection of dependent
claims 7, 8, 12 and 19 under 35 U.S.C. § 103(a) based on Chapman
and McLoughlin will also not be sustained.
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