Appeal No. 2000-0948 Page 7
Application No. 08/511,341
combination." ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732
F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984). And
"teachings of references can be combined only if there is some
suggestion or incentive to do so." Id. Here, the prior art
contains none. In fact, the advantages of utilizing both a
first wavelength pulse of light at about 3 microns in a water
absorption band of the tissue and a second wavelength pulse of
light at about 6 microns in a protein absorption band of the
tissue as set forth in claim 1 are not appreciated by the
prior art applied by the examiner for the reasons set forth by
the appellants (brief, pp. 5-13).
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.
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