Ex parte ARUFFO et al. - Page 8




          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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