Appeal No. 1999-1004
Application 08/764,439
the system of Saeki or Washizu. Finally, the examiner
has not explained one of ordinary skill in the art would
have been motivated to utilize both the developing agent
of Kohmura and the antioxidant of Shibahashi in the
system of Saeki or Washizu. Here, absent hindsight, the
skilled artisan would not have found it obvious to
utilize the antioxidant of Shibahashi and the developing
agent of Kohmura for the reason discussed above. These
desperate processes provide no desirability for the
combination as set forth by the examiner, and we find
that the examiner’s asserted motivation to combine these
references is based on improper hindsight reasoning.
These circumstances lead us to conclude that the
examiner, in making his Section 103 rejection, has fallen
victim to the insidious effect of hindsight syndrome
wherein that which only the inventor has taught is used
against its teacher. W. L. Gore & Assocs. v. Garlock,
Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed.
Cir. 1983), cert. denied, 469 U.S. 851 (1984).
Hence, we reverse the rejection of record.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1-3 and 5-13 under 35 U.S.C. § 103 is reversed.
REVERSED
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