Appeal No. 2005-0929
Application No. 09/852,519
rather it is an ocular implant made of specific polymers which permit the passage of an
active agent or drug through said polymers by diffusion. Gwon, col. 3, lines 26-48.
Given the structural differences between the ophthalmic device disclosed by Gwon and
the plugs set forth in the claims, we do not find that Gwon’s disclosure that the “tracers
may be incorporated into the insert by physical admixture or dissolution into the implant
matrix” [col. 5, lines 48-50], would have reasonably suggested the incorporation of a
substance which is more easily visualized into a punctual plug. Rather, the only
suggestion we find for such a combination is in the appellant’s specification. Thus, we
find that the examiner has engaged in impermissible hindsight to arrive at the
conclusion that the claimed invention would have been obvious over Robinson and
Gerson. In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992);
Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1138, 227 USPQ 543, 547 (Fed.
Cir. 1985); W.L. Gore & Assocs. v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303,
311-313 (Fed. Cir. 1983), cert denied, 469 U.S. 851 (1984) (“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”).
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