Appeal No. 1997-0174 Page 13
Application No. 08/302,207
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), cert. denied, 469 U.S. 851 (1984). It is essential
that "the decisionmaker forget what he or she has been taught
at trial about the claimed invention and cast the mind back to
the time the invention was made . . . to occupy the mind of
one skilled in the art who is presented only with the
references, and who is normally guided by the then-accepted
wisdom in the art." Id.
Since the examiner's determination of obviousness was
incorrect for the reasons stated above, the decision of the
examiner to reject claims 1 and 3 through 8 under 35 U.S.C. §
103 is reversed. 6
6We have also reviewed the references to Jones and
Krumhansl but find nothing therein which makes up for the
deficiencies of the Admitted Prior Art and Schirm discussed
above.
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