Appeal No. 1995-1989
Application 07/850,142
sample derived from a subject who does not have AD. On this record, the only location
where such teachings or suggestions appear is in the appellants’ specification. Thus, we
find that the examiner has relied on impermissible hindsight in making her determination of
obviousness. In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir.
1992)(“It is impermissible to use the claimed invention as an instruction manual or
“template” to piece together the teachings of the prior art so that the claimed invention is
rendered obvious.”); 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, 312-13 (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 prior art rejections are reversed.
The decision of the examiner is reversed.
REVERSED
Joan Ellis )
Administrative Patent Judge )
)
)
Douglas W. Robinson ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
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