Appeal No. 2004-0339 Page 5
Application No. 09/462,678
to the insidious effect of a hindsight syndrome wherein that which only the
invention taught is used against its teacher.
. . . [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.
We have no doubt that the prior art could be modified in a manner consistent with
appellants’ specification and claims, but the fact that the prior art could be so modified
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).
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