Appeal No. 2003-1679 Page 7
Application No. 08/993,010
invention. Akzo N.V., Aramide Maatschappij v.o.f. v. United States Int’l Trade
Comm’n, 808 F.2d 1471, 1481, 1 USPQ2d 1241, 1246 (Fed. Cir. 1986).
We note the examiner’s assertion (Answer, page 15), “[i]t is the position of
the examiner that Figura in view of Xiang clearly provides a reasonable
expectation of success in detecting the presence of humoral Type I and Type II
antibodies (see Figure 5) indicative of H.[ ]pyloir Type I or Type II strains infecting
the patient.” However, as discussed above, on this record, neither Figura nor
Xiang provide a correlation of the presence or absence of specific antibodies to
infection with Type I or Type II H. pylori. While the examiner has asserted that a
correlation exists, the evidence of record does not support this assertion. We
remind the examiner 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.” W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1553,
220 USPQ 303, 312-13 (Fed. Cir. 1983).
Crabtree, relied upon by the examiner (Answer, page 7) to teach “the use
of a detectably labeled anti-human immunoglobulin antibodies…,” fails to make
up for the deficiencies in the combination of Figura and Xiang. Accordingly, we
reverse the rejection of claims 1-3, 6-10 and 13-17 under 35 U.S.C. § 103 as
being unpatentable over Figura in view of Xiang and Crabtree.
Figura in view of Xiang and Crabtree and further in view of Telford:
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