Appeal No. 2004-0748 Page 13
Application No. 09/427,226
teachings of the prior art to produce the claimed invention, absent some teaching or
suggestion supporting the combination." ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732
F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984). And "teachings of references
can be combined only if there is some suggestion or incentive to do so." Id. Here, the
prior art contains none. Instead, it appears to us that the examiner relied on hindsight in
reaching his obviousness determination. However, our reviewing court has said, "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 & Assoc. v. Garlock, Inc., 721
F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
(1984). It is essential that "the decisionmaker forget what he or she has been taught
. . . about the claimed invention and cast the mind back to the time the invention was
made . . . to occupy the mind of one skilled in the art who is presented only with the
references, and who is normally guided by the then-accepted wisdom in the art." Id.
For the reasons set forth above, the decision of the examiner to reject claim 6,
and claims 7 and 16 dependent thereon, under 35 U.S.C. § 103 as being unpatentable
over Farnworth in view of Burns is reversed.
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007