Appeal No. 1997-3274 Page 7
Application No. 08/015,248
burden of establishing a prima facie case of obviousness based upon the prior art.
>[The Examiner] can satisfy this burden only by showing some objective teaching in the
prior art or that knowledge generally available to one of ordinary skill in the art would
lead that individual to combine the relevant teachings of the references.=@ In re Fritch,
972 F.2d 1260, 1265, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992) (citations omitted). ATo
imbue one of ordinary skill in the art with knowledge of the invention . . . , 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 & Assocs., Inc. v. Garlock, Inc., 721 F.2d
1540, 1552, 220 USPQ 303, 312-313 (Fed. Cir. 1983).
The references cited by the examiner do not teach or suggest all of the
limitations of the instant claims and therefore do not support a prima facie case of
obviousness. The rejection of the claims under 35 U.S.C. ' 103 is reversed.
REVERSED
)
Sherman D. Winters )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
)
William F. Smith ) APPEALS AND
Administrative Patent Judge )
) INTERFERENCES
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