Appeal No. 1997-2674
Application No. 08/266,809
Burton’s process in the manner as suggested by the examiner in
spite of Burton’s teachings regarding the use of heat
resistant materials or a cooling fluid to counteract the harsh
environment in the boiler.
Under these circumstances, we determine that Burton would
not have suggested the modification of Burton’s process in the
manner as proposed by the examiner. Because the examiner has
engaged in impermissible hindsight reconstruction, we reverse
the examiner’s rejection under 35 U.S.C. § 103 of claims 6, 7,
9, and 10 as unpatentable over Burton. W. L. Gore & Assoc. v.
Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed.
Cir. 1983)(“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.”).
The decision of the examiner is reversed.
REVERSED
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