Appeal No. 2000-2232
Application 08/483,928
prior art may be modified in the manner suggested by the
Examiner does not make the modification obvious unless the
prior art suggested the desirability of the modification." In
re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84
n. 14 (Fed. Cir. 1992), citing In re Gordon, 733 F.2d 900,
902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). However,
"[o]bviousness may not be established using hindsight or in
view of the teachings or suggestions of the invention." Para-
Ordnance Mfg. v. SGS Importers Int’l, 73 F.3d at 1087, 37
USPQ2d at 1239, citing W. L. Gore & Assocs., Inc. v. Garlock,
Inc. 721 F.2d at 1553, 220 USPQ at 312-13.
In addition, the Federal Circuit has recently stated
"This factual question of motivation is material to
patentability, and could not be resolved on subjective belief
and unknown authority.” It is improper, in determining
whether a person of ordinary skill would have been led to this
combination of references, simply to "[use] that which the
inventor taught against its teacher." W.L. Gore v. Garlock,
Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir.
1983)." In re Lee, ___
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