Appeal No. 1999-0111
Application 08/484,593
that the applied prior art, or knowledge generally available in the art, would have
suggested the preparation of a bacterial growth medium which comprises either the
enzyme substrates for a glycosidase and a peptidase (e.g., claim 14) or the enzyme
substrates for a phosphatase, glycosidase and a peptidase (e.g., claims 1 and 27) to one
of ordinary skill in the art. On this record, we only find these suggestions in the appellants’
disclosure. Thus, we agree with the appellants that the examiner has engaged in
impermissible hindsight in making her determination of obviousness. In re Gorman, 933
F.2d 982, 987, 18 USPQ2d 1885, 1888 (Fed. Cir. 1991)(“It is impermissible, however,
simply to engage in a hindsight reconstruction of the claimed invention, using the
applicant’s structure as a template and selecting elements from references to fill the
gaps”); Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1138, 227 USPQ 543, 547
(Fed. Cir. 1985); W.L. Gore & Assocs. v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ
303, 312-313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984)(“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”).
6
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007