Appeal No. 1998-1426
Application No. 08/315,350
invention, absent some teaching or suggestion supporting the
combination." ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732
F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984). And
"teachings of references can be combined only if there is some
suggestion or incentive to do so." Id. Here, the prior art
contains none. In fact, the advantages of utilizing an above
ground hazardous liquid container are not appreciated by the
prior art applied by the examiner.
Instead, it appears to us that the examiner relied on
hindsight in reaching his obviousness determination. However,
our reviewing court has said, "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 & 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 decision maker 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
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