Appeal No. 1995-3499
Application No. 07/757,342
this conclusion was reached since Rosemblit does not teach, or even suggest isolating,
the claimed LH/hCG. To the contrary, the only mention we find of LH/hCG is in the
appellants’ specification. Thus, we agree with the appellants that the examiner has
engaged in impermissible hindsight to arrive at the conclusion that the claimed invention
would have been obvious over Rosemblit. In re Fritch, 972 F.2d 1260, 1266, 23
USPQ2d 1780, 1784 (Fed. Cir. 1992); 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.
Other Issues
Upon return of this application to examining corps, the examiner should clarify the
record as to its effective filing date. It is noted that the applicants have claimed priority,
under 35 USC § 119, of two Japanese patent applications, and they have provided
certified copies thereof. However, there are no certified translations of said applications in
the file; nor any indication by the examiner as to whether the application has been
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