Appeal No. 1997-0012
Application No. 08/174,901
determine where the edges [of address labels and apertures]
lie” (column 8, line 28). Radl’s invention is to enhance the
signals representing the edge positions of address labels and
apertures, and at the same time, to cancel out the signals
representing the remaining flat areas of the envelope and the
address labels and apertures, as well as text information
(column 5, lines 37-42 and column 6, lines 22-30).
We fail to perceive any teaching, suggestion or
motivation in the applied prior art which would have led one
of ordinary skill in the art to substitute Pizano’s procedure
(or its equivalents) for that of Radl to arrive at the claimed
invention. It is our view that the examiner’s determination
of obviousness is based on impermissible hindsight analysis
“wherein that which only the inventor taught is used against
its teacher.” W. L. Gore & Assoc. v. Garlock, Inc., 721 F.2d
1540, 1553, 220 USPQ 303, 313 (Fed. Cir. 1983), cert. denied,
469 U.S. 851 (1984). Without appellants’ teachings, one of
ordinary skill in the art would not have been led to
substitute Pizano’s and Kizu’s procedures (or their
equivalents), which extract address characters and contents,
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