Appeal No. 1998-0062
Application No. 08/252,896
supporting the combination." ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d
1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984). And "teachings of references can be
combined only if there is some suggestion or incentive to do so." Id. Here, the prior art
reference contains no motivation to modify the teachings as the examiner has maintained
in the answers. In fact, the advantages of providing a multi-port switching system to a
target device with a disable signal is not suggested in the prior art applied by the examiner
and the examiner has not provided a convincing line of reasoning why one skilled in the art
would have been motivated to modify the prior art system.
Here, the examiner has extended the teachings of the prior art system to House with
multiple variations and combinations of the embodiments in Figures 1, 2 and 3 of House
with an ultimate conclusion that the claimed invention would have been obvious. We
disagree with the examiner. Here, the examiner is manipulating the prior art in an attempt
to meet the language of the claim. This is not a reasonable interpretation of the prior art
teachings of House, as a whole.
Instead, the examiner relied on hindsight in reaching his obviousness
determination. However, our reviewing court has said, "[t]o imbue one of ordinary skill in
the art with knowledge of the invention in suit, when no prior art reference or references of
record convey or suggest that knowledge, is to fall victim to the insidious effect of a
hindsight syndrome wherein that which only the inventor taught is used against its teacher."
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