Appeal No. 95-3220
Application 08/112,986
rejection is because the appellants’ specification teaches a composition comprising the
modifications described in said references. There are no teachings in the references
themselves which would have suggested their combination. In fact, the only place we find
such suggestion is in the appellants’ specification. Thus, we find that the examiner has
relied on impermissible “hindsight” to arrive at the conclusion that the present invention is
obvious over the prior art. In re Fritch, supra; Interconnect Planning Corp. v. Feil, 774
F.2d 1132, 1138, 227 USPQ 543, 547 (Fed. Cir. 1985) (“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”); 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”).
We note in the appellants’ arguments that the claimed compositions exhibit
unexpected results. In re Soni, 54 F.3d 746, 749, 34 USPQ2d 1684, 1687 (Fed. Cir.
1995). However, since the examiner has failed to meet his burden of establishing a
prima facie case of obviousness in the first instance, we need not consider the appellants’
evidence in this regard.
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