Appeal No. 2001-0224
Application 09/045,511
roast, meat loaf or other items onto a carving dish or the like
as the case may be.” Lee, column 3, lines 39-42 (emphasis
added). Thus, Lee’s hinged end walls merely facilitate removal
of a food item from the pan. Although it might be plausible to
include Vizurraga’s slicing guide in Lee’s device, such
modification is simply unsupported by the teachings of the prior
art.
In sum, we conclude that the examiner’s motivation for
combining Lee, Clayton and Vizurraga can only be based upon
improper hindsight reasoning. See 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)(“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.”).
The remaining references are relied upon for teachings
of the various features recited in dependent claims 4-11. The
examiner has not identified how any of these references would
cure the above-noted deficiencies in the examiner’s proposed
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