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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