Appeal No. 96-0943 Page 4
Application No. 08/142,832
of the applied prior art would not have suggested the
relationship between the handpiece and the carrier means as
recited in independent claim 17. In that regard, independent
claim 17 requires (1) a handpiece having a longitudinal axis, and
(2) a carrier means oriented perpendicularly to the longitudinal
axis of the handpiece wherein the carrier means causes laser
light to exit the carrier means through a light exit port in a
direction perpendicular to the central axis of the carrier means
and parallel to the second end of the carrier means (e.g.,
parallel to the longitudinal axis of the handpiece). Contrary to
the position of the examiner, it is our opinion that Daikuzono
and Nagasawa would not have provided any motivation to an artisan
to make a 90° angle between Aihara's shank 7 and holder 8. It is
our view, after a careful review of the combined teachings of the
applied prior art, that in searching for an incentive for
modifying the laser hand piece of Aihara, the examiner has
impermissibly drawn from the appellant's own teachings and fallen
victim to what our reviewing Court has called "the insidious
effect of a hindsight syndrome wherein that which only the
inventor taught is used against its teacher."
W. L. Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220
USPQ 303, 313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
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