Appeal No. 2000-1746
Application 08/791,098
We note that the mere fact that the prior art could be
modified in the manner urged by the examiner would not have
made such modification obvious unless the prior art suggested
the desirability of the modification. See In re Gordon, 773
F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984) and In re
Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783-84 (Fed.
Cir. 1992). In this case, it is our opinion that the examiner
has impermissibly drawn from appellant’s own teaching and
fallen victim to what our reviewing Court has called “the
insidious effect of a hindsight syndrome wherein that which
only the inventor has taught is used against its teacher.”
W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540,
1553, 220 USPQ 303, 313 (Fed. Cir. 1983).
Since we have determined that the teachings and
suggestions that would have been fairly derived from Krumholz
and Baldwin
would not have made the subject matter as a whole of claim 1
on appeal obvious to one of ordinary skill in the art at the
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007