Appeal No. 2001-0592
Application 09/110,824
since the depressions (20) which extend along the length of
the belt are indicated to greatly assist in disposing of the
metal and emery dust removed when grinding (page 2, col.1,
lines 10-17).
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).
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