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
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