Appeal No. 2000-1296 Page 8
Application No. 08/794,869
the invention was made to a person having ordinary skill in
the art, we are constrained to reverse the decision of the
examiner to reject claims 1 to 6 under 35 U.S.C. § 103.
Moreover, assuming arguendo that Woodson is analogous art
as explained by the examiner (answer, p. 4), we find ourselves
in agreement with the appellant's argument (brief, pp. 5-8;
reply brief, pp. 2-5) that there is no motivation in the
applied prior art to modify Chabert's ionizer head by
Woodson's wear liner tube. 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 . . . about the claimed invention
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007