Appeal No. 96-3132 Page 5 Application No. 08/248,521 zinc, and (2) very little motivation for the selection of zinc has been provided. 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 weight 68 of Hochstrasser, 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 (1984). Since we have determined that the subject matter of independent claims 1 and 15 would not have been suggested by the combined teachings of the applied prior art, it follows that we will not sustain the examiner's rejection of appealed independent claims 1 and 15, or claims 5 and 14 which depend therefrom, under 35 U.S.C. § 103.Page: Previous 1 2 3 4 5 6 7 8 NextLast modified: November 3, 2007