Appeal No. 1996-2215 Application No. 08/101,093 expectation of success. Both the suggestion and reasonable expectation of success must be founded in the prior art, not in applicant’s disclosure. See In re Vaeck 947 F.2d 488, 495, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991). On this record, the examiner does not point to any reason, suggestion, or motivation stemming from the prior art which would have led a person having ordinary skill to (1) nonadsorbently control the partial pressure of carbon dioxide, and/or (2) mix the exhaust gas with oxygen before re-introducing the exhaust gas into the culture medium. Instead, the examiner impermissibly relies on hindsight in reaching the ultimate conclusion of obviousness. “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 Fine, 837 F.2d 1071, 1075, 5 USPQ2d 1596, 1600 (Fed. Cir. 1988), citing W.L. Gore & Assoc. V. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983). 7. Having determined that the examiner has not 11Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 NextLast modified: November 3, 2007