Ex parte GRABHORN - Page 11

                 Appeal No. 1999-2446                                                                                    Page 11                        
                 Application No. 08/705,592                                                                                                             

                 independent claims under appeal.   In fact, the advantages of3                                                                            
                 utilizing wood fragments as set forth in the claims under                                                                              
                 appeal are not appreciated by Stacy.                                                                                                   

                          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                                                                                  

                          3The examiner references other prior art (i.e., Pine Bark                                                                     
                 Mulch) on page 6 of the answer.  We note that no rejection                                                                             
                 utilizing that prior art is before us in this appeal.                                                                                  

Page:  Previous  4  5  6  7  8  9  10  11  12  13  14  15  16  17  18  Next 

Last modified: November 3, 2007