Appeal No. 2000-0031
Application No. 09/061,526
Like appellant, it is our view that the examiner’s
position in this appeal represents a clear case of
impermissible hindsight reconstruction of the claimed
invention based on appellant’s own teachings. In that regard,
we note, as our court of review indicated in In re Fritch, 972
F.2d 1260, 1266 n.15, 23 USPQ2d 1780, 1783-84 n.15 (Fed. Cir.
1992), that it is impermissible to use the claimed invention
as an instruction manual or “template” in attempting to piece
together isolated disclosures and teachings of the prior art
so that the claimed invention is rendered obvious. Moreover,
and more to the point in the present appeal, we observe that
the mere fact that some prior art references may be modified
in the manner suggested by the examiner does not make such a
modification obvious unless the prior art suggested the
desirability of the modification. See In re Gordon, 733 F.2d
900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). Here, the
prior art relied upon by the examiner contains no such
suggestion.
Since we have determined that the teachings and
suggestions found in Takahashi and Watsham would not have made
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