Appeal No. 2003-1723
Application 09/849,705
prior art does not contain such a suggestion and that the
examiner has impermissibly drawn from appellants’ own teaching
and fallen victim to what our reviewing Court has called “the
insidious effect of a hindsight syndrome wherein that which only
the inventor has taught is used against its teacher.” W.L. Gore
& Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220
USPQ 303, 313 (Fed. Cir. 1983).
Since we have determined that the teachings and suggestions
found in Schwecke and Saunders would not have made the subject
matter as a whole of independent claim 1 on appeal obvious to one
of ordinary skill in the art at the time of appellants’
invention, we must refuse to sustain the examiner’s rejection of
that claim under 35 U.S.C. § 103(a). It follows that the
examiner’s rejection of dependent claims 2, 3, 7 and 8 under
35 U.S.C. § 103(a) on the basis of the combined teachings of
Schwecke and Saunders will likewise not be sustained.
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