Appeal No. 1996-0876
Application 08/123,144
a method of treating nuts with compressed carbon dioxide so as to make them oxidation
resistant. Kotani, Example 4. However, we point out that the nuts treated with
compressed nitrogen gas showed no effect on oxidation resistance. See Example 4 and
the results in col. 5, lines 1-11. Thus, it is not clear to us, and no reasons have been
provided by the examiner, as to why these teachings would have rendered the claimed
method obvious to one of ordinary skill in the art.
On this record, the only place where we find a suggestion to treat a food product
with an antioxidant under vacuum, to increase the pressure to one atmosphere and to
replace the air in the pressure chamber with nitrogen, is in the appellant’s specification.
Thus, we find that the examiner has relied on impermissible hindsight in making his
determination of obviousness. In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780,
1784 (Fed. Cir. 1992)(“It is impermissible to engage in hindsight reconstruction of the
claimed invention, using the applicant’s structure as a template and selecting elements
from references to fill the gaps”); Interconnect Planning Corp. v. Feil, 774 F.2d 1132,
1138, 227 USPQ 543, 547 (Fed. Cir. 1985); W.L. Gore & Assocs. v. Garlock, Inc., 721
F.2d 1540, 1553, 220 USPQ 303, 312-313 (Fed. Cir. 1983), cert. denied,
469 U.S. 851 (1984) (“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”).
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