Appeal No. 1997-0195
Application 08/126,987
ignores Harbison’s critical requirement that HCN gas be scavenged before it reaches the
silver halide emulsion. Further, Kadowaki teaches away from using chlorinated s-triazine
hardeners in silver halide photographic materials to be stored, unless those hardeners are
used in combination with Kadowaki’s sensitizers having formulas (Ia) or (Ib).
We have no doubt that the prior art could be modified in the manner proposed by
the examiner to arrive at appellants’ claimed invention. This can be seen from a review of
the instant specification and claims. However, the mere fact that the prior art could be so
modified would not have made the modification obvious unless the prior art suggested the
desirability of the modification. In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127
(Fed. Cir. 1984). In relying on selected portions of the prior art and ignoring the entire
teachings of the prior art, 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.” W.L.
Gore & Associates. v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed.
Cir. 1983).
We also find that the abstract and appellants’ description of Ishikawa do not cure
the deficiencies of Harbison and Kadowaki.
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007