Appeal No. 95-3406
Application 07/940,016
154 USPQ 173, 178 (CCPA 1967). Our reviewing court has
repeatedly cautioned against employing hindsight by using the
applicant's disclosure as a blueprint to reconstruct the claimed
invention from the isolated teachings in the prior art. See,
e.g., Grain Processing Corp. v. American Maize-Prods. Co.,
840 F.2d 902, 907, 5 USPQ2d 1788, 1792 (Fed. Cir. 1988).
As stated in W.L. Gore & Assocs. 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.
It is our conclusion that the only reason to modify the casing of
the Stiso reference in the manner proposed by the examiner to
include a depression results from a review of appellant’s
disclosure and the application of impermissible hindsight. Thus,
we cannot sustain the examiner's rejection of appealed claim 8
under 35 U.S.C. § 103.
We make the following new rejections pursuant to the
provisions of 37 CFR § 1.196(b).
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