Appeal No. 2001-0934 Page 7
Application No. 09/294,483
Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988).
In our opinion, the evidence relied upon by the examiner fails to suggest
to a person of ordinary skill in the art that the references should be combined in
the manner necessary to arrive at appellants’ claimed invention. The only
suggestion to combine the references in the manner suggested by examiner
comes from appellants’ specification. In this regard, we note as set forth in
W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1553,
220 USPQ 303, 312-13 (Fed. Cir. 1983), that “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.”
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007