Appeal No. 1998-3402 Page 9
Application No. 08/190,929
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." Id. Since the
claimed subject matter as recited in the claims under appeal
is not taught or suggested by the applied prior art, the
decision of the examiner to reject claims 1 to 15, 18 and 19
under 35 U.S.C. § 103 is reversed.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 4 and 5 under 35 U.S.C. § 112, second paragraph, is
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