Appeal No. 2005-1511
Application No. 09/879,398
patient is in the appellant’s disclosure. Accordingly, we find that the examiner
has engaged in impermissible hindsight to arrive at the conclusion that the
claimed invention would have been obvious over Bell, Ensslin, Lamb, Falkenburg
and Coligan. 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, 312-313 (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”).
In view of the foregoing, Rejection I is reversed.
Rejections II and III
The examiner’s rejection of claims 4, 5 and 11 (Rejections II and III) is
based on an initial finding of the obviousness of independent claim 6 in view of
the teachings of Bell, Ensslin, Lamb, Falkenburg and Coligan. Since we find that
the examiner did not sustain his burden of establishing a prima facie case in this
regard, these rejections fail for the reasons set forth above.
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