Appeal No. 2000-2015
Application 08/843,060
the tip of a fishing rod as in Ward does not itself provide
sufficient teaching, suggestion or motivation for structurally
modifying the rod member in Kelly so as to have a light source
and housing structure incorporated therein as specifically
called for in appellant’s claim 1 on appeal. The examiner’s
added reliance on design choice to somehow justify the
combination of Kelly and Ward is also misplaced.
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,
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