Appeal No. 2000-0006 Page 7
Application No. 08/868,480
Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir.
1988) and In re Lintner, 458 F.2d 1013, 1016, 173 USPQ 560,
562 (CCPA 1972). When it is necessary to select elements of
various teachings in order to form the claimed invention, we
ascertain whether there is any suggestion or motivation in the
prior art to make the selection made by the appellant. It is
well settled that obviousness cannot be established by
combining the teachings of the prior art to produce the
claimed invention, absent some teaching, suggestion or
incentive supporting the combination. The extent to which
such suggestion must be explicit in, or may be fairly inferred
from, the references, is decided on the facts of each case, in
light of the prior art and its relationship to the appellant's
invention. It is impermissible, however, simply to engage in
a hindsight reconstruction of the claimed invention, using the
appellant's structure as a template and selecting elements
from references to fill the gaps. The references themselves
must provide some teaching whereby the appellants' combination
would have been obvious. In re Gorman, 933 F.2d 982, 986, 18
USPQ2d 1885, 1888 (Fed. Cir. 1991) (citations omitted). That
is, something in the prior art as a whole must suggest the
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