Appeal No. 1999-1787
Application No. 08/797,521
(31) of Simon together with their function and to intertwine
the lift cords at the rear of the slats with the riser cords
would have been obvious to one of ordinary skill in the art.
Absent any teaching, suggestion or evidence thereof, we must
disagree with the examiner’s proposed modification of Simon
and his conclusion of obviousness based on Simon. In this
regard, like appellant, we note that the mere fact that the
prior art could be modified in the manner urged by the
examiner would not have made such modification obvious unless
the prior art suggested the desirability of the modification.
See In re Gordon, 773 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed.
Cir. 1984) and In re Fritch,
972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992).
Again, it is our opinion that the examiner has impermissibly
drawn from appellant’s own teaching 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). Since we have determined that the
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