Ex Parte White et al - Page 4


                   Appeal 2007-0420                                                                                                 
                   Application 10/643,383                                                                                           
                   references of record convey or suggest that knowledge[.] . . . [To do so] 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 re Fine,                                        
                   837 F.2d at 1075,  5 USPQ2d at 1600, quoting from W.L. Gore & Assoc. v.                                          
                   Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir.                                              
                   1983).  “One cannot use hindsight reconstruction to pick and choose among                                        
                   isolated disclosures in the prior art to deprecate the claimed invention.”                                       
                    In re Fine, 837 F.2d at 1075, 5 USPQ2d at 1600.  That the claimed subject                                       
                   matter lacks complexity is not justification for building a case of                                              
                   obviousness to a person having ordinary skill in the art on a foundation of                                      
                   impermissible hindsight.                                                                                         
                           Based on the evidence before us, we reverse the Examiner’s rejection                                     
                   of the claimed subject matter for obviousness because, absent knowledge of                                       
                   the invention Appellants claim, we find no combination of the cited prior art                                    
                   teachings which would have directed one of ordinary skill in the art to the                                      
                   invention claimed.  First, neither the referenced nor acknowledged prior art                                     
                   teaching recognizes the problem which Appellants' invention was designed                                         
                   to remedy.  Furthermore, the prior art does not appear to provide another                                        
                   reason to carry out the particular method Appellants claim.  Compare  In re                                      
                   Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990) (en banc), cert.                                           
                   denied, 500 U.S. 904 (1991).                                                                                     
                           The Examiner relies on the combined teachings of the Alexandres                                          
                   patent, “PRIOR ART” Figures 1A, 1B & 1C of the present application, and                                          
                   the Hooke patent for a reasonable suggestion for a person having ordinary                                        
                   skill in the art to make and use the claimed invention.  The Examiner                                            


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