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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