Appeal No. 2003-0511
Application No. 09/350,448
structural elements in his numerous catheter embodiments which
may be radiopaque including marker band 34 (e.g., see Figures 1-
3), other marker arrangements generally (e.g., see lines 25-26 on
page 14), as well as cups and/or collars (e.g., see Figure 38 et
seq. and lines 16-18 on page 35). However, the examiner has not
identified and we do not independently find any teachings of
Dusbabek which relate his elastic mounting body to a radiopaque
characteristic much less which would have suggested the
desirability, and thus the obviousness, of providing this
mounting body with such a characteristic.
On the record before us, the only disclosure which contains
the afore-noted suggestion is from the appellants’ own
specification. Under these circumstances, we believe that the
examiner, in formulating the rejection under review, has
unwittingly fallen victim to the insidious and impermissible
effect of hindsight syndrome wherein that which only the inventor
has taught is used against his teacher. W. L. Gore & Assocs. v.
Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-313 (Fed.
Cir. 1983), cert. denied, 469 U.S. 851 (1984).
For the above-stated reasons, the examiner’s Section 103
rejection of all appealed claims as being unpatentable over
Dusababek cannot be sustained.
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