Appeal No. 2002-1069 Page 5
Application No. 09/263,342
considered to have been obvious to a person of ordinary skill in the art. However, even
if all those changes were made to the in-line skate of either Olson '833 or Olson '526, it
would not arrive at the claimed invention. The claimed invention is a "ski boot." The in-
line skates of Olson '833 and Olson '526 are not ski boots and in the rejections before
us in this appeal the examiner never determined that it would have been obvious at the
time the invention was made to a person of ordinary skill in the art to have modified the
in-line skate of either Olson '833 or Olson '526 to be a ski boot. Thus, the examiner
failed to establish a prima facie case of obviousness of the claimed subject matter.
Moreover, it appears to us that the examiner relied on hindsight in reaching the
obviousness determination since the advantages of utilizing the claimed ski boot are
not appreciated by the prior art applied by the examiner. 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 decisionmaker forget what he or she has been taught . . .
about the claimed invention and cast the mind back to the time the invention was
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