Appeal No. 1999-1478
Application 08/742,327
applying a solid film lubricant on the tapered yoke end 25
(i.e. at the connection between the main shaft 14 and the yoke
12) would result in a sliding motion between the main shaft 14
and the yoke 12. Such sliding motion would be detrimental to
the operation of the coal pulverizer. Thus, as argued in
appellants’ brief (page 8) there is nothing in the Itoh
reference which would teach or suggest applying a dry film
lubricant to the tapered yoke end of a main shaft for a coal
pulverizer.
In our opinion, in searching for an incentive for
modifying the prior art main shaft, the examiner has
impermissibly drawn from appellants’ own teachings and fallen
victim to what our reviewing Court has called “the insidious
effect of a hindsight syndrome wherein that which only the
inventor has taught is used against its teacher.” W. L. Gore
& Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220
USPQ 303, 313 (Fed. Cir. 1983) cert. denied, 469 U.S. 851
(1984). It is thus our view that the examiner’s conclusion of
obviousness is based on a hindsight reconstruction using
appellants’ own disclosure as a blueprint to arrive at the
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