Appeal No. 1997-0003
Application No. 08/342,614
factual basis for this statement based on the applied prior art, or otherwise. Thus, we
agree with the appellant that the only suggestion for making such a modification is found in
the specification. That is, the only way for the examiner to arrive at his conclusion of
obviousness is by hindsight reconstruction of the invention using the present composition
as a “template.” 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, 312-13 (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”). Accordingly, we reverse the rejection of claims 9 through 11 and 28
through 30.
AFFIRMED-IN-PART
)
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
11
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