Appeal No. 2003-0545 Page 8
Application No. 08/436,096
conducting layer, we find no suggestion to replace the conducting
layer of Snowden with a light conducting layer which is
inherently an insulator. We are not persuaded by the examiner's
argument (answer, page 5) that the motivation to combine Snowden
and Sakurai comes from the fact that both references deal with an
electric cable. In view of Snowden's teaching that the inner
core should be made of a conductor with high thermal
conductivity, we find no suggestion, and none has been provided
by the examiner, that would have taught or suggested to an
artisan that the conducting core of Snowden be replaced by a
light-conducting cable, other than from the teachings of
appellant's disclosure. The Federal Circuit has stated 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, 733
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 at 1087, 37 USPQ2d at 1239
(Fed. Cir. 1995), citing W. L. Gore & Assocs., v. Garlock, Inc.,
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