Appeal No. 1997-3279 Page 9
Application No. 08/240,702
applied in such a combination. (Examiner's Answer
at 6.)
The appellants argue, "mere happenstance overlap in the
rotor and stator magnetic component ratio is not sufficient to
establish a prima facie obvious case. It is necessary that he
knowledge would lead to combine [sic] the relevant teachings
of the references to arrive at the claimed invention."
“Obviousness may not be established using hindsight or in
view of the teachings or suggestions of the inventor.”
Para-Ordnance Mfg., 73 F.3d at 1087, 37 USPQ2d at 1239 (citing
W.L. Gore & Assocs., Inc., 721 F.2d at 1551, 1553, 220 USPQ at
311, 312-13 (Fed. Cir. 1983)). “‘[T]he question is whether
there is something in the prior art as a whole to suggest the
desirability, and thus the obviousness, of making the
combination.’” In re Beattie, 974 F.2d 1309, 1311-12, 24
USPQ2d 1040, 1042 (Fed. Cir. 1992) (quoting Lindemann
Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d
1452, 1462, 221 USPQ 481, 488 (Fed. Cir. 1984)). “It is
impermissible to use the claimed invention as an instruction
manual or ‘template’ to piece together the teachings of the
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