Appeal No. 97-0925 Page 11
Application No. 08/328,159
Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177 (CCPA 1967), cert.
denied, 389 U.S. 1057 (1968).
The examiner in the rejection of claims 1, 5, 9 and 13 under
35 U.S.C. § 103 determined (final rejection, pp. 3-4) that
it would have been obvious to one skilled in the art to
modify Rowsey's canopy by forming the canopy into a
cylindrical shape.
For the reasons set forth by the appellant (brief, pp. 11-
17), we conclude that claims 1, 5, 9 and 13 are not obvious over
Rowsey. It is our view, after a careful review of the teachings
of Rowsey, that in searching for an incentive for modifying the
shape of the planetarium/umbrella of Rowsey, 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 9 would not have been suggested by the teachings of the
applied prior art, it follows that we will not sustain the
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