Appeal No. 1999-2030 Page 14
Application No. 08/423,077
prior art contains none. 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 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.
For the reasons set forth above, the decision of the
examiner to reject claims 21 and 22 under 35 U.S.C. § 103 is
reversed.
Page: Previous 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 Next
Last modified: November 3, 2007