Appeal No. 1998-1434 Page 8
Application No. 08/159,647
selecting a single direct access storage device (DASD) from a
plurality of DASDs of a RAID system.
The examiner fails to show a suggestion of the
limitations in the prior art. “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 1085, 1087, 37 USPQ2d 1237, 1239
(Fed. Cir. 1995)(citing W.L. Gore & Assocs., Inc. v. Garlock,
Inc., 721 F.2d 1540, 1551, 1553, 220 USPQ 303, 311, 312-13
(Fed. Cir. 1983)). “The mere fact that the prior art may be
modified in the manner suggested by the Examiner does not make
the modification obvious unless the prior art suggested the
desirability of the modification.” In re Fritch, 972 F.2d
1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992) (citing In
re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir.
1984)). “It is impermissible to use the claimed
invention as an instruction manual or ‘template’ to piece
together the teachings of the prior art so that the claimed
invention is rendered obvious.” Id. at 1266, 23 USPQ2d at
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