Appeal No. 2000-1664
Application No. 09/114,790
6 through 15 because the examiner has not addressed the
motivation of one skilled in the art to modify the McAllister
reference so as to include X and Y conductor lines.
It appears to us that the examiner relied on hindsight in
reaching his obviousness determination. However, our reviewing
court has said, “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.” 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 decision maker
forget what he or she has 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 step of
building the top surface layer so as to include X and Y
conductor lines is not taught or suggested by McAllister, we
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