Appeal No. 2000-1568
Application 08/695,249
1132, 1138, 227 USPQ 543, 547 (Fed. Cir. 1985); W.L. Gore & Assocs. v. Garlock, Inc.,
721 F.2d 1540, 1553, 220 USPQ 303, 312-313 (Fed. Cir. 1983), cert. denied, 469 U.S.
851 (1984)(“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”).
Accordingly, Rejection II is reversed.
III. Other issues
Upon return of the application to the corps, the examiner may wish to consider the
following.
1. Reject the claims individually, or in the very least, identify the claim(s) to
which the rejection is directed. In our reading of the examiner’s rejection in the Answer, it
was never clear to us which claim(s) the examiner was addressing. The examiner would
be well advised to consider the limitations present in each claim individually, starting with
claim 1, and to address those limitations before moving on to other claims.
2. The issue of obviousness in view of the teachings of Shasha ‘697 and
Shasha ‘377. To that end, we direct attention to the teachings of Shasha ‘697, col. 3,
lines 50-54, wherein it states:
In yet another embodiment of the invention, the biocontrol agent,
pregelatinized starch material, and the sugary material can be admixed and
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