Appeal No. 1998-0682
Application 08/724,306
of designer’s choice, absent a showing of criticality on appellants’ part, imposes an improper standard
of patentability on appellants that is not provided for in 35 U.S.C. § 103(a). In our opinion, in
searching for an incentive for modifying the process in Kennedy, the examiner has impermissibly drawn
from appellants’ own teachings and fallen victim to what our reviewing Court has called "the insidious
effect of a hindsight syndrome wherein that which only the inventor has taught is used against its
teacher." W. L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303,
313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984). It is thus our view that the examiner's
conclusion of obviousness is based on a hindsight reconstruction using appellants’ own disclosure as a
blueprint to arrive at the claimed subject matter. Since it is our determination that the teachings and
suggestions found in Kennedy and Hitachi Cable would not have made the subject matter as a whole of
claim 1 on appeal obvious to one of ordinary skill in the art at the time of appellants’ invention, we must
refuse to sustain the examiner’s rejection of claim 1 under 35 U.S.C.
§ 103(a).
We have additionally reviewed the patent to Todd applied along with Kennedy and Hitachi
Cable by the examiner against claims 4, 8 and 9 on appeal. However, we find nothing in the Todd
patent which would change our view as expressed above, i.e., nothing which would supply that which
we have indicated above to be lacking in the teachings of Kennedy and Hitachi Cable. Kennedy
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