Appeal No. 1999-0946
Application No. 08/693,641
not contemplated by the Orimoto reference. Indeed, given the disparate nature of the
bottles disclosed in Orimoto and Hall, it is our view that in searching for an incentive for
modifiying the plastic bottle of Orimoto, the examiner has impermissibly drawn from
appellant’s own teachings and fallen victim to what our reviewing Court has called “the
insidious efect 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). Since we have determined that the
examiner’s conclusion of obviousness is based on hindsight reconstruction using
appellant’s own disclosure as a blueprint to arrive at the claimed subject matter, it follows
that we will not sustain the examiner’s rejection of appealed claim 1 over Orimoto in view
of Hall.
Since the teachings and suggestions found in the Orimoto and Hall references
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 appellant's invention, we must refuse to sustain the
examiner's rejection of claim 1 and dependent claims 2-5 under 35 U.S.C. § 103(a).
The rejection of claim 7, which is dependent on claim 3 (which in turn depends on
claim 1) will also not be sustained for the same reasons set forth above.
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