Appeal No. 2003-0395 Page 6
Application No. 09/374,704
with which the invention can be understood may prompt one “to fall victim
to the insidious effect of a hindsight syndrome wherein that which only the
invention taught is used against its teacher.” [ ]
Most if not all inventions arise from a combination of old elements. [ ]
Thus, every element of a claimed invention may often be found in the prior
art. [ ] However, identification in the prior art of each individual part
claimed is insufficient to defeat patentability of the whole claimed
invention. [ ] Rather, to 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.
“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). The
examiner may establish a case of prima facie obviousness based on a combination of
references “only by showing some objective teaching in the prior art or that knowledge
generally available to one of ordinary skill in the art would lead that individual to
combine the relevant teachings of the references.” Id., 972 F.2d 1260, 1265, 23
USPQ2d 1780, 1783 (Fed. Cir. 1992).
The fact that the prior art could have been modified in a manner consistent with
appellants’ claims would not have made the modification obvious unless the prior art
suggested the desirability of the modification. In re Gordon, 733 F.2d 900, 902, 221
USPQ 1125, 1127 (Fed. Cir. 1984). On this record, the only reason or suggestion to
combine the references in the manner claimed comes from appellant’s specification.
The rejection of claims 1, 3-19, 25 and 26 under 35 U.S.C. § 103 is reversed.
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