Appeal No. 2001-0154
Application No. 08/838,266
system with a chamber to receive a mini-blind and a curtain
rod adaptor sized and shaped to receive an end of a curtain
rod. 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
decision maker 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."
As such, we will not sustain the examiner’s rejection of claim
7 and claim 8 dependent thereon.
We turn finally to the examiner’s rejection of claims 16
7
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