Appeal No. 97-2626
Application 08/234,502
and ‘92 devices prevent the accidental opening of a cassette
cover. (Findings 8 and 11). The claimed invention is
directed to detecting both the width and height of an inserted
object and blocking insertion of the object if either the
width or the height is less than a correct width and height.
(Finding 2). The examiner’s suggestion that one skilled
in the art would have been motivated to modify the Narita ‘93
device, or alternatively modify Narita ‘93 in view of Narita
‘92 to arrive at the claimed invention can only be made with
the benefit of knowledge found in the Appellant’s disclosure.
It is improper to rely on Appellant’s own disclosure as
motivation for combining the prior art. See W.L. Gore &
Assocs. v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303,
312-13 (Fed. Cir. 1983) ("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."); In re McLaughlin, 443 F. 2d
1392, 1395, 170 USPQ 209, 212 (CCPA 1971) (obviousness
judgments are necessarily based on hindsight; so long as
judgment takes into account only knowledge known in the art,
9
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007