Appeal No. 1996-2769
Application 08/270,089
1138, 227 USPQ 543, 547 (Fed. Cir. 1985); W.L. Gore & Assocs. v. Garlock, Inc., 721
F.2d 1540, 1553, 220 USPQ 303, 312-13 (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”).
We recognize that the examiner has relied on two additional references, Beverloo
and Kanehisa, in reaching her conclusion of obviousness. However, we do not find these
additional teachings bolster the examiner’s position. Contrary to the examiner’s argument,
we do not find that the teachings of Beverloo of a method of making a new luminescent
label by ball milling would have suggested the claimed method to one of ordinary skill in the
art. Nor do we find any teachings in Beverloo which would have suggested to such
persons to combine the teachings of Royce, Hewes and Matijevic to arrive at the claimed
method of producing spherical particles of less than one micron in size.
As to the Kanehisa publication, we agree with the appellant that the firing of
europium-activated yttrium oxysulfide do not teach or suggest the formation of spherical
particles of less than one micron. To the contrary, Kanehisa discloses
... the mean particle size of Y O is 1.5 µm, there are no grains of this
2 3
size in the SEM image, which indicates that primary Y O particles
2 3
aggregate and form coagulated grains of about 8-10 µm in size. In
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