Appeal No. 1998-3130 Page 5
Application No. 08/626,174
Admitting that Banerjee does not disclose a heat slug
having at least five sides, the examiner concludes, "[i]t is
also a matter of design choice to have a heat slug with at
least five sides, absent persuasive evidence that the
particular configuration of the heat slug was significant."
(Examiner's Answer at 5.) The appellants reply, "using a heat
slug having at least five sides does solve a specific design
problem." (Appeal Br. at 8.)
“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)). “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 Gorman, 933 F.2d 982, 987, 18 USPQ2d 1885,
1888 (Fed. Cir. 1991)).
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