Appeal No. 2005-2100
Application No. 09/826,038
design of experiments than it is to the combination of prior art teachings.” In re Dow
Chem. Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988).
There must be a reason or suggestion in the art for selecting the procedure used,
other than the knowledge learned from the applicant's disclosure. Interconnect
Planning Corporation v. Feil, 774 F.2d 1132, 1143, 227 USPQ 543, 551 (Fed. Cir.
1985). Stated differently, while a person of ordinary skill in the art may possess the
requisite knowledge and ability to modify the protocol taught by Funk, the
modification is not obvious unless the prior art suggested the desirability of the
modification. In re Gordon, 733 F.2d 900, 902, 211 USPQ 1125, 1127 (Fed. Cir.
1984). In my opinion, the record presented for our review provides no suggestion to
modify Funk in a manner that would lead to Appellant’s claimed invention. In my
opinion, the only suggestion on this record to arrange the process steps as set forth in
Appellant’s claimed invention comes from Appellant’s specification, but “[t]o 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 & Associates, Inc. v. Garlock, Inc., 721
F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983).
17
Page: Previous 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 Next
Last modified: November 3, 2007