Appeal No. 96-1879
Application 08/006,194
As stated in W.L. Gore & Assocs. 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 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, the examiner has
not established a prima facie case of obviousness, and we cannot
sustain the examiner's rejections of appealed claims 20 through
26 and 28 through 43 under 35 U.S.C. § 103.
Since we have determined that the evidence of obviousness
is insufficient to establish a prima facie case under 35 U.S.C.
§ 103, it has not been necessary for this panel of the Board to
address the declaration of Heinz K. Macho filed pursuant to the
provisions of 37 CFR § 1.132 as evidence of nonobviousness.
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