Appeal No. 96-1249
Application 08/270,215
artisan would have recognized that Mikoshiba's metal or metal
oxide layer inherently is discontinuous, and motivation cannot
be based on an inherent property that was not recognized in
the art. See In re Rijckaert, 9 F.3d 1531, 1534, 28 USPQ2d
1955, 1957 (Fed. Cir. 1993):
"That which may be inherent is not necessarily
known. Obviousness cannot be predicated on what
is unknown." In re Spormann, 363 F.2d 444, 448,
150 USPQ 449, 452 (CCPA 1966). Such a
retrospective view of inherency is not a
substitute for some teaching or suggestion
supporting an obviousness rejection. See In re
Newell, 891 F.2d 899, 901, 13 USPQ2d 1248, 1250
(Fed.Cir.1989).
Nor is adequate motivation provided by the Olson patent,
which the examiner, citing Olson's description of analog and
matrix touch screens at column 1, lines 18-35 (Answer at 4),
argues "teaches the interchangeability of the two types of
touch screen" (Answer at 7). For the reasons already
discussed, these two screen types are not interchangeable
insofar as adding Mikoshiba's continuous metal or metal oxide
layer to the contact surface of an electroconductive layer is
concerned. That is, adding a continuous metal or metal oxide
layer to the contact surface of the electroconductive layer in
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