Appeal No. 2003-0456 Page 4
Application No. 09/149,289
both Hanek [sic] and Kawakami et al. note the importance of this fact. " (Id.) The
appellants argue, "[t]he rejection fails to provide a sufficient rationale to support that
one of skill in the art would have been motivated to combine and modify the prior art of
record to achieve the present invention." (Reply Br. at 1.)
"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)). "[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 applicants." 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); In re Gordon, 733 F.2d 900, 902,
221 USPQ 1125, 1127 (Fed. Cir. 1984)). "[T]he factual inquiry whether to combine
references must be thorough and searching." McGinley v. Franklin Sports, Inc., 262
F.3d 1339, 1351-52, 60 USPQ2d 1001, 1008 (Fed. Cir. 2001). The inquiry cannot "be
resolved on subjective belief and unknown authority," In re Lee, 277 F.3d 1338, 1343-
44, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002); "[i]t must be based on objective evidence
of record." Id. at 1343, 61 USPQ2d at 1434.
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