Appeal No. 1997-3668
Application 08/395,228
art suggested the desirability of the modification." In re
Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84 n.14
(Fed. Cir. 1992), citing In re Gordon, 733 F.2d 900, 902, 221
USPQ 1125, 1127 (Fed. Cir. 1984). "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 at 1087, 37 USPQ2d at 1239, citing W.
L.
Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d at 1553, 220
USPQ at 312-13.
As pointed out above, any modification of Burger by
Murakami destroys the basic structure of Burger. Burger does
not provide a suitable substrate for diffused resistors and
terminals. Such an attempted modification is prompted by
nothing more in the record than hindsight. None of the
references even allude to terminal “overlap”. Since there is
no evidence in the record to support the Examiner’s
combination, we will not sustain the Examiner’s rejection of
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