to motivate one of ordinary skill in the art to modify either
US ‘041 and/or DE ‘503 and/or EP ‘400 as is proposed by
Okajima. Lastly, US ‘622 describes an ankle brace for
preventing injury to the wearer’s ankle. US ‘622 appears to
have little, if any relevance to the claimed subject matter.
We find that Okajima’s suggestion that one skilled in the
art would have been motivated to modify the DE ‘503 and/or US
‘041 boot in view of EP ‘400, DE ‘746, AT ‘637 and/or US ‘622
to arrive at the claimed invention can only be made with the
benefit of knowledge found in Bourdeau’s disclosure. It is
improper to rely on Bourdeau’s own disclosure as motivation
for combining the prior art. See W.L. Gore & Assocs. v.
Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed.
Cir. 1983) ("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."); In re McLaughlin, 443 F. 2d
1392, 1395, 170 USPQ 209, 212 (CCPA 1971) (obviousness
judgments are necessarily based on hindsight; so long as
judgment takes into account only knowledge known in the art,
there is no error.).
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