Appeal No. 1997-2058
Application No. 08/122,828
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 & Assoc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13
(Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984). It is essential that :
the decisionmaker forget what he or she has been taught at trial about the
claimed invention and cast the mind back to the time the invention was made
. . . to occupy the mind of one skilled in the art who is presented only with the
references, and who is normally guided by the then-accepted wisdom in the
art. W.L. Gore, 721 F.2d at 1553, 220 USPQ at 313.
Since the limitation concerning concurrent operation with multitasking is not taught
or suggested by the applied prior art, we will not sustain the 35 U.S.C. § 103 rejection of
independent claims 1, 11 and 13, and of dependent claims 2-10, 12 and 14-20.
No time period for taking any subsequent action in connection with this appeal may
be extended under 37 CFR § 1.136(a).
CONCLUSION
To summarize, the decision of the examiner to reject claim 18 under 35 U.S.C.
§ 112, paragraph two is affirmed and the decision of the examiner to reject claims 1-20
under 35 U.S.C. § 103 is reversed.
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