Appeal No. 2001-0090 Page 9
Application No. 08/893,890
"teachings of references can be combined only if there is some
suggestion or incentive to do so." Id. Here, the prior art
contains none. In fact, the advantages of utilizing a
discontinuity formed in the outer surface of the center
portion of the bearing spacer device (e.g., reduction in
weight, dissipates more heat) are not appreciated by the prior
art applied by the examiner. In fact, as correctly pointed
out by the appellant in the brief (p. 8), Bescoby does not
teach or suggest any discontinuity formed in the outer surface
of bearing runner 16.
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
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