Ex parte BORS et al. - Page 7

          Appeal No. 95-0365                                                          
          Application 07/921,537                                                      

          reasons why the prior art would have suggested to those of                  
          ordinary skill in the art the endblocking of a polyformaldehyde             
          chain with autoxidizable end groups in order to make an air-                
          curing composition which comprises acetoacetate functional groups           
          and said polyformaldehyde chain.  On this record, we only find              
          these suggestions in the appellants’ specification.  Accordingly,           
          we agree with the appellants, that the examiner has relied on               
          impermissible hindsight in making his determination of                      
          obviousness.  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) (“It is                 
          impermissible to engage in hindsight reconstruction of the                  
          claimed invention, using the applicant’s structure as a template            
          and selecting elements from references to fill gaps”).  W.L. Gore           
          & Associates, 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 invention taught is used against its teacher”).  Thus, on               
          this record, we do not find that the examiner has established,              

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