Appeal No. 1998-0501
Application No. 08/518,997
Instead, the examiner relied on hindsight in reaching his obviousness
determination. However, our reviewing court has said, "[t]o 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 & 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 limitations concerning the use of transparent materials in both the cap
and hot melt are not taught or suggested by the applied prior art, we will not sustain the 35
U.S.C. § 103 rejection of independent claims 5 and 20, and of dependent claims 7-13.
CONCLUSION
To summarize, the decision of the examiner to reject claims 5, 7-13 and 20 under
35 U.S.C. § 103 is reversed.
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