Appeal No. 2006-1870 Παγε 8
Application No. 10/100,901
have to be some reason or motivation or suggestion that would
have led an artisan to make the proposed changes.
The examiner is correct that discovering an optimum value of
a result dependent variable involves only routine skill in the
art (answer, page 4). However, because the claimed hardness and
density are for polishing semiconductors, we find no reason why
an artisan would have modified a dental polishing tool to include
the claimed hardness and density parameters necessary for
polishing semiconductor wafers. Unless there were some showing
in the dental or similar art that these hardness and density
parameters would have been useful in a dental polishing tool, we
find that the only reason to modify Jefferies comes from
appellants disclosure in a hindsight reconstruction of
appellants’ invention. “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
1085, 1087, 37 USPQ2d 1237, 1239 (Fed. Cir. 1995)(citing W.L.
Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1551, 1553,
220 USPQ 303, 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
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