Appeal No. 96-1501
Application No. 08/172,517
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 prior art 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 rejections of appealed claims 1 through 3, 5 and 6
under 35 U.S.C. § 103 as being unpatentable over Appellants'
admitted prior art in view of Walker. We have also considered
the additional teachings of the patent to Marzola applied in the
rejection of appealed claim 4 under § 103, but we find nothing
therein to cure the deficiencies noted above. Consequently, we
also cannot sustain the examiner's rejection of appealed claim 4
under 35 U.S.C. § 103 as being unpatentable over Appellants'
admitted prior art in view of Walker and Marzola.
We next consider the examiner's rejection of claims 1
through 3, 5 and 6 under 35 U.S.C. § 103 as being unpatentable
over Matsumoto in view of Walker and Appellants' admitted prior
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