Appeal No. 2001-0707 Page 7
Application No. 09/068,526
not have made it obvious at the time the invention was made to
a person of ordinary skill in the art to have bent the flat
serpentine configuration and wires attached to it of Young
about axes corresponding to one or more of Young's straight
pipe sections. 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 that "the decisionmaker forget what
he or she has been taught . . . about the claimed invention
and cast the mind back to the time the invention was made . .
. to occupy the mind of one skilled in the art who is
presented only with the references, and who is normally guided
by the then-accepted wisdom in the art." Id.
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007