Appeal No. 2001-1284 Page 11
Application No. 08/792,765
hindsight knowledge derived from the appellant's own disclosure.
The use of such hindsight knowledge to support an obviousness
rejection under 35 U.S.C. § 103 is, of course, impermissible.
See, for example, W. L. Gore and Assocs., Inc. v. Garlock, Inc.,
721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983), cert.
denied, 469 U.S. 851 (1984).
A critical step in analyzing the patentability of claims
pursuant to 35 U.S.C. § 103 is casting the mind back to the time
of invention, to consider the thinking of one of ordinary skill
in the art, guided only by the prior art references and the then-
accepted wisdom in the field. See In re Dembiczak, 175 F.3d 994,
999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999). Close adherence to
this methodology is especially important in cases where the very
ease with which the invention can be understood may prompt one
"to fall victim to the insidious effect of a hindsight syndrome
wherein that which only the invention taught is used against
its teacher." Id. (quoting W.L. Gore & Assocs., Inc. v. Garlock,
Inc., 721 F.2d at 1553, 220 USPQ at 313).
Most if not all inventions arise from a combination of old
elements. See In re Rouffet, 149 F.3d 1350, 1357, 47 USPQ2d
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