Appeal No. 1999-0418 Page 6
Application No. 08/517,036
be obtained from the ferroelectric material, those skilled in
the art would be led away from the claimed invention if
ferroelectric layered superlattice materials have a lower
dielectric constant and a correspondingly lower capacitance."
(Reply Br. at 4.)
“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,
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