Appeal No. 96-0563
Application 07/540,839
applied references or from knowledge clearly present in the
prior art to substitute the axially movable dog of the ratchet
wrench taught by Myers for plunger pin of spanner wrench of
Plungis. 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 combine the
teachings of the applied references in the manner proposed by
the examiner results from a review of appellants' disclosure
and the application of impermissible hindsight. Thus, we
cannot sustain the examiner's rejection of appealed claim 32
under 35 U.S.C. § 103.
Accordingly, the decision of the examiner rejecting
claims 30 and 31 under 35 U.S.C. § 103 affirmed, but the
decision rejecting claim 30 under 35 U.S.C. § 102(b) and
rejecting claim 32 under 35 U.S.C. § 103 is reversed.
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