Ex parte MOORMAN - Page 14




          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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