Appeal No. 94-1696
Application 07/811,129
from the specification, we concur with the appellants that the
examiner has engaged in impermissible hindsight to arrive at the
conclusion that the invention of claim 1 is obvious over Springer
and Zettlemeissl. In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d
1780, 1784 (Fed. Cir. 1992); Interconnect Planning Corp v. Feil,
774 F.2d 1132, 1138, 227 USPQ 543, 547 (Fed. Cir. 1985); W.L.
Gore & Assocs. v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ
303, 312-313 (Fed. Cir. 1983) cert. denied 469 U.S. 851 (1984)
(“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”).
Accordingly, the rejection is reversed.
New Ground of Rejection under 37 CFR § 1.196(b)
Under the provisions of 37 CFR § 1.196(b) we make the
following new grounds of rejection.
Claims 1, 3, 4, 6, 9, 11, 12, 14, 15 and 17 are rejected
under 35 U.S.C. § 112, first and second paragraphs, as the
claimed invention is not described in such full, clear, and
concise exact terms as to enable one skilled in the art to make
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