Appeal No. 2002-1059
Application No. 09/051,933
carbon material, in combination with a particle rather than fiber
as the chosen form of carbonaceous material, in combination with
a specific particle size range of 15 to 25 µm from patentee’s
broad 1 to 80 µm range, in combination with a bulk density within
patentee’s 1.35 to 1.80 g/cm3 range which by serendipity would
satisfy the here claimed filling density range of 1.2 to 1.40
g/cc.
On the record of this appeal, it is only the appellants’ own
disclosure which provides any guidance for precisely and
selectively choosing the above discussed features in combination,
thereby resulting in a negative electrode having a volume
resistivity within the range defined by the appealed claims. We
are compelled to conclude, therefore, that the examiner in
formulating his rejection has unwittingly fallen victim to the
insidious effect of hindsight syndrome wherein that which only
the inventor has 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).
Thus, even when viewed in its most generous light, the examiner’s
inherency position must be regarded as deficient in that it is
ultimately based upon impermissible hindsight.
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