Appeal No. 97-0071
Application No. 08/263,033
teaching in the prior art or by knowledge generally available to
one of ordinary skill in the art that would have led that
individual to combine the relevant teachings of the references to
arrive at the claimed invention. See In re Fine, 837 F.2d 1071,
1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). This the examiner
has not done.
We agree with the appellant that the combined teachings of
McGeehins and Barnhart would not have suggested placing the
hourglass shaped birdfeeding tray 105 of Barnhart in McGeehins'
sleeve 10 as set forth in the examiner's rejections of claim 1.
We also agree with the appellant that the combined teachings of
Schwennicke, Vartanian and Barnhart would not have suggested
modifying the frame 1 of Schwennicke's suitcase to be hourglass
shaped as set forth in the examiner's rejection of claim 11.
As stated in 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),
[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.
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