Appeal No. 1997-1186
Application No. 08/319,913
second pressure would not have changed Ishibashi’s pressure
sensor into a differential pressure sensor, absent further
modifications, such as those related to the pressure sensor
circuitry and the glass base (32).
Accordingly, it is clear to us that the examiner's
proposed modification of Hingorany and Ishibashi (Answer,
pages 4-7) would not have resulted in the claimed invention.
Furthermore, assuming Hingorany and Ishibashi may be
capable of being modified so as to result in the claimed
invention, there must be some teaching, suggestion or
motivation in the prior art references to do so. “The mere
fact that the prior art could be so modified would not have
made the modification obvious unless the prior art suggested
the desirability of the modification.”
In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed.
Cir. 1984). We see no such suggestion. Here, the examiner
has relied upon hindsight analysis by reading into the prior
art appellant’s own teachings to arrive at the determination
of obviousness. It is impermissible to use hindsight, i.e.,
use the claimed invention as a template to piece together the
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