Appeal No. 1998-1916 Page 6
Application No. 08/406,392
“Obviousness may not be established using hindsight or in
view of the teachings or suggestions of the inventor.”
Para-Ordnance Mfg., 73 F.3d at 1087, 37 USPQ2d at 1239 (citing
W.L. Gore & Assocs., Inc., 721 F.2d at 1551, 1553, 220 USPQ at
311, 312-13 (Fed. Cir. 1983)). “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.” 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)). "[T]o establish obviousness based on a
combination of the elements disclosed in the prior art, there
must be some motivation, suggestion or teaching of the
desirability of making the specific combination that was made
by the applicant." In re Kotzab,
217 F.3d 1365, 1370, 55 USPQ2d 1313, 1316 (Fed. Cir. 2000)
(citing In re Dance, 160 F.3d 1339, 1343, 48 USPQ2d 1635, 1637
(Fed. Cir. 1998) and In re Gordon, 733 F.2d 900, 902, 221 USPQ
1125, 1127 (Fed. Cir. 1984)).
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