Appeal No. 96-3144
Application 08/322,111
Instead, it appears to us that the examiner relied on hindsight in reaching the
obviousness determination. However, our reviewing court has said, "[t]o 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." W. L. Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ
303, 312-13 (Fed. Cir. 1983).
In reaching our decision in this appeal, we have given careful consideration to the
appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. Upon evaluation of all
the evidence before us, it is our conclusion that the evidence adduced by the examiner is
not sufficient to establish a prima facie case of obviousness with respect to
claim 1. Accordingly, we will not sustain the examiner's rejection of claims 1, 6 and 9
under 35 U.S.C. § 103.
Since all the limitations of independent claims 1, 6 and 9 are not suggested by the
applied prior art, we cannot sustain the examiner's rejection of appealed claims 2-5, 7 and
8 which depends therefrom, under 35 U.S.C. § 103.
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