Appeal No. 2000-0994
Application 09/097,123
that “[t]he Examiner is of the position that appellants [sic] claimed invention is clearly taught by
Wright” (answer, page 5). Thus, we agree with the position advanced by appellants (brief, pages
6-7 and 9-10). Therefore, it is clear that the examiner has resorted to hindsight gained from
appellants’ specification and claims in order to reach the conclusion that the claimed invention
was prima facie obviousness over each of Lontz and Wright which is an inappropriate standard
of obviousness under 35 U.S.C. § 103(a). See generally, In re Rouffet, 149 F.3d 1350, 1358, 47
USPQ2d 1453, 1458 (Fed. Cir. 1998) (“hindsight” is inferred when the specific understanding or
principal within the knowledge of one of ordinary skill in the art leading to the modification of
the prior art in order to arrive at appellant’s claimed invention has not been explained); W.L.
Gore & Associates v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir.
1983) (“To imbue one of ordinary skill in the art with knowledge of the invention . . . when no
prior art reference or references of record convey or suggest that knowledge, is to fall victim to
. . . hindsight . . . wherein that which only the inventor taught is used against its teacher.”).
Accordingly, we reverse the grounds of rejection with respect to appealed claims 8
through 11.
The examiner’s decision is affirmed-in-part.
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