Ex parte GRUBER et al. - Page 12

          Appeal No. 1998-3207                                      Page 12           
          Application No. 08/518,874                                                  

          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 a "means               
          for linking" is 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 decisionmaker forget what he or she has been taught               
          at trial about the claimed invention and cast the mind back to              

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