Appeal No. 2001-0036
Application 08/971,611
substantial physical injury to the skier, as in appellants’
application. Moreover, there is nothing in Challande to
suggest solving such a problem in the particular manner
claimed by appellants. In our opinion, the examiner has
inappropriately employed appellants' discussion of their
discovery of the source of the problem as a teaching for the
proposed modification of Challande. That is, in searching for
an incentive for modifying Figure 5 of Challande, the examiner
has impermissibly drawn from appellants' own teachings
regarding the deficiencies of the prior art. In this regard,
it is clear that the examiner has 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). As for the examiner’s position (answer,
page 8) that the exact location of the low friction material
in appellants’ claimed subject matter “is given little
patentable weight,” because appellants have not demonstrated
unexpected results or criticality to having this material on
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