Appeal No. 96-0216
Application 07/842,915
F.2d 1132, 1138, 227 USPQ 543, 547 (Fed. Cir. 1985) (“It is
impermissible to engage in hindsight reconstruction of the
claimed invention, using the applicant’s structure as a template
and selecting elements from references to fill the gaps.”) 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)
(“To 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”).
Accordingly, the rejection over Nakagawa and Blardone is
reversed.
The appellants respond on pp. 8-10 of the Brief, to three
references ( Vail, Goodwin and Shugar) which were made of record,
but not relied on for purposes of rejection, by the examiner.
Paper No. 5, p. 6; Paper No. 8, p. 6. However, we point out that
the examiner's reliance on these references to support his
arguments throughout prosecution and in the Answer is
inappropriate. It is well established that "[w]here a reference
is relied on to support a rejection, whether or not in a 'minor
capacity,' there would appear to be no excuse for not positively
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