Appeal No. 1998-2504
Application No. 08/664,279
Appellants argue that the asserted transformation of the window 17 of Kobayashi
into a priority slot as taught by Fago would be hindsight reconstruction. (See reply brief at
page 2 and brief at page 8.) We agree with appellants. Appellants further argue that, at
most, Fago would have suggested to designate a shelf in the storage pack 21 as a priority
shelf/slot, which would still not be separate from the removable magazine. (See reply brief
at pages 3-4.)
It appears to us that, as Appellants have maintained, the examiner has relied on
hindsight in reaching his obviousness determination. However, our reviewing court has
said that "[t]o 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 at trial
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 the limitation
that a separate priority slot in combination with a cartridge magazine and interrupting the
cartridge exchange to transport the priority slot cartridge to the drive unit is not taught or
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