Appeal No. 1995-1993
Application 07/661,370
our view, the examiner has relied on impermissible hindsight in making his determination
of obviousness. In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir.
1992) (“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”); Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1138, 227 USPQ 543,
547 (Fed. Cir. 1985); 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 is
reversed.
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