Appeal No. 1999-0555
Application No. 08/593,330
surround his electrode and that the disposition of Kato’s heat
generating part relative to his electrode is not clearly
disclosed. In any event, the examiner’s aforementioned
argument begs the issue of obviousness with respect to the
ratio feature claimed by the appellants.
This is because it simply cannot be determined from the
applied reference teachings whether this ratio would or would
not be obtained in “[l]ocating the heat generating portion
adjacent the electrodes.”
Under these circumstances recounted above, it is our
determination that the examiner’s Section 103 rejection based
on the Japanese ‘848, Yamada and Kato references is premised
upon impermissible hindsight wherein that which only the
inventor has taught is used against its teacher. W.L. Gore &
Assocs. v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303,
312-13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
For this reason and because the above discussed deficiencies
of these references are not supplied by the other references
applied by the examiner, we cannot sustain any of the
rejections before us on this appeal.
The decision of the examiner is reversed.
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