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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