Appeal No. 2006-0456 Page 8
Application No. 10/410,778
for making the combination. “Obviousness may not be established
using hindsight or in view of the teachings or suggestions of the
inventor.” Para- Ordnance Mfg. v. SGS Importers Int’l, 73 F.3d
1085, 1087, 37 USPQ2d 1237, 1239 (Fed. Cir. 1995)(citing W.L.
Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1551, 1553,
220 USPQ 303, 311, 312-13 (Fed. Cir. 1983)). “It is
impermissible to use the claimed invention as an instruction
manual or ‘template’ to piece together the teachings of the prior
art so that the claimed invention is rendered obvious.” In re
Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir.
1992)(citing In re Gorman, 933 F.2d 982, 987, 18 USPQ2d 1885,
1888 (Fed. Cir. 1991)).
Kuo does teach making the decurler of Young adjustable, as
set forth by the examiner. However, Kuo discloses (col. 10,
lines 52-54 and column 4) that there is provided a compact dual
decurler mechanism that provides a single straight paper path for
achieving bi-directional decurling capability. From the
disclosure of a compact decurler with offset rollers, having a
single straight paper path, we find that an artisan would not
have been motivated by the teachings of Kuo to make the decurler
of Young in a substantially linear formation. Thus, because Kuo
does not make up for the deficiencies of Baruch, we find that the
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