Appeal No. 2006-1990 Παγε 9
Application No. 10/678,231
amplified by our comments, that an artisan would not have been
motivated to combine the teachings of Nasca and Deeg, absent
appellants' disclosure. “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
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)).
Although couched in terms of combining prior art references,
the same requirement applies in the context of modifying such a
reference. Here, the examiner's broad, conclusory opinion of
obviousness does not meet the requirement for actual evidence.
From all of the above, we find that the combined teachings
of Nasca and Deeg would not have suggested the invention of
claim 1. Accordingly, we cannot sustain the rejection of claim 1
under 35 U.S.C. § 103(a). In addition, because all of the other
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