Appeal No. 2003-0242 Page 6
Application No. 09/484,604
regard, absent the use of impermissible hindsight,1 we fail to discern any suggestion,
incentive or motivation in the applied prior art to combine the teachings thereof to arrive
at the claimed invention. Obviousness cannot be established by combining the
teachings of the prior art to produce the claimed invention, absent some teaching,
suggestion or incentive supporting the combination. The applied prior art must provide
some teaching whereby the appellant's combination would have been obvious. In re
Gorman, 933 F.2d 982, 986, 18 USPQ2d 1885, 1888 (Fed. Cir. 1991) (citations
omitted). That is, something in the prior art as a whole must suggest the desirability,
and thus the obviousness, of making the combination. See In re Beattie, 974 F.2d
1309, 1312, 24 USPQ2d 1040, 1042 (Fed. Cir. 1992); Lindemann Maschinenfabrik
GmbH v. American Hoist and Derrick Co., 730 F.2d 1452, 1462, 221 USPQ 481, 488
(Fed. Cir. 1984). In this case, the examiner's alleged motivations as set forth in the
obviousness rejections under appeal (answer, pp. 4-6) are, in our belief, based on the
appellant's disclosure and not from the teachings of the applied prior art. In our view
the combined teachings of the applied prior art would have suggested a system in
which semiconductor wafers are polished as taught by Sandhu and that the polishing
pad of Sandhu be thereafter conditioned as taught by Birang, not the claimed invention.
1 The use of hindsight knowledge derived from the appellant's own disclosure to support an
obviousness rejection under 35 U.S.C. § 103 is impermissible. See, for example, W. L. Gore and
Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied,
469 U.S. 851 (1984).
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