Appeal No. 1999-0339
Application 07/903,588
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”).
Accordingly, Rejection II is reversed.
No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART
JOAN ELLIS )
Administrative Patent Judge )
)
)
11
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007