Appeal No. 2001-1541 Page 11
Application No. 09/094,297
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.
Since it would not have been obvious to combine the
teachings of the applied prior art for the reasons set forth
above, we will not sustain the 35 U.S.C. § 103 rejection of
claims 1 to 20.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1, 3 and 9 under 35 U.S.C. § 102(b) is reversed and the
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