Appeal No. 2004-1153
Application No. 09/927,140
modification obvious unless the prior art suggested the
desirability of the modification. See, for example, In re
Gordon, 773 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).
In this case, it is our opinion that the prior art relied upon by
the examiner does not contain such a suggestion and that the
examiner has impermissibly drawn from appellant's own teaching in
searching through the prior art for elements of the claimed
subject matter and, in attempting to combine those elements
together, has 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). Contrary to the
examiner's apparent belief, the mere fact that cam lock fasteners
are known in the prior art for attaching furniture panels
together, in and of itself, provides no motivation or suggestion
for modifying the particular receiver-stock assembly of the long
firearm shown in Browning to use or include such a fastener.
Since we have determined that the teachings and suggestions
found in Browning and Harley would not have made the subject
matter as a whole of independent claims 1, 16, 27 and 30 on
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