Appeal No. 1998-2463 Page 10
Application No. 08/598,854
prior art applied by the examiner. We agree with the examiner
that if the raster output scanners of Andrew
and Appel were modified as advanced by the examiner the
resultant structure might obtain a shorter wavelength
switching time, and a passive dispersive element could have
been utilized. However, from all of the above, we find no
suggestion in the prior art for making the proposed
modification of replacing the laser and dispersive element of
Andrews with those of Appel.
It appears to us that the examiner has relied upon
hindsight in reaching the obviousness determination. Our
reviewing court has said, “[t]o 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). Accordingly, we
find that the examiner has failed to establish a prima facie
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: November 3, 2007