Appeal No. 2002-2274
Application No. 08/387,158
As is evinced by page 4, lines 10-15 of the instant
specification that indium content could be as high as 0.6
wt.% without affecting said properties. Therefore, ordinary
skill artisan is contemplated the indium content as taught
by cited said references is not limited to the preferred
embodiment as disclosed by cited references but includes the
indium amount not affecting said properties, which is many
folds higher than the claimed 0.11 wt% indium.
In making this argument the examiner is using the appellants’
disclosure of their invention as prior art, which is improper.
The examiner has imbued one of ordinary skill in the art with
knowledge of the appellants’ invention which is not disclosed in
or suggested by the applied references. See W.L. Gore & Assocs.
v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed.
Cir. 1983), cert. denied, 469 U.S. 851 (1984). In doing so, the
examiner has fallen “victim to the insidious effect of a
hindsight syndrome wherein that which only the inventor taught is
used against its teacher.” In re Dembiczak, 175 F.3d 994, 999,
50 USPQ2d 1614, 1617 (Fed. Cir. 1999) (quoting Gore, 721 F.2d at
1553, 220 USPQ at 312-13). Accordingly, we reverse the
rejections over Sakano and the prior art applied therewith.
Rejection over JP ‘683
The appellants’ claims 63, 65 and 67 require that the alloy
includes 0.11 to about 0.6 wt% indium. JP ‘683, however,
discloses an alloy containing 0.005-0.1 wt% indium and teaches
that “if the amount is more than the upper limit, the current
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