Appeal No. 1998-0765
Application No. 08/451,853
the appellants’ disclosure as a road map. We also so noted
this in our related decision in Appeal No. 97-2026, Serial No.
08/317,108.
The Federal Circuit states that “[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 n.14, 23 USPQ2d 1780, 1783-84
n.14 (Fed. Cir. 1992), citing In re Gordon, 773 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 1087, 37 USPQ 2d at 1239 (Fed. Cir.
1995), citing W. L. Gore & Assocs., v. Garlock Inc., 721 F.2d
at 1551, 1553, 220 USPQ at 311, 312-13 (Fed. Cir. 1983).
Thus we are of the opinion that the combination of Uchino
and Miyasaka is not proper. Therefore, we do not sustain the
obviousness rejection of claims 16 to 22, and 24 to 36 over
Uchino and Miyasaka.
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