Ex parte MIMEUR et al. - Page 9




          Appeal No. 96-0987                                                          
          Application No. 08/226,467                                                  


          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).                                                
                    Furthermore, as stated in W.L. Gore & Assocs. Inc. v.             
          Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-313 (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 Fenton and Molitor (even considering Desbiolles,               
          which is surplusage) 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 claims 8 and 12 under                  
          35 U.S.C.  103.  We have also carefully considered the teachings           
          Hutin and Yoneyama applied in the rejections of claims 9 through            
          11 and Yoneyama applied in the rejection of claims 13 and 14, but           
          we find nothing therein to cure the deficiencies in the factual             
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