Appeal No. 2000-2097 Page 6
Application No. 08/852,681
workpiece-engaging member of metal. In fact, the advantages
of utilizing a metal workpiece-engaging member are not
appreciated by the prior art applied by the examiner.
Instead, it appears to us that the examiner relied on
hindsight in reaching the 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
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 metal workpiece-engaging
member limitation of claim 1 is not taught or suggested by the
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