Appeal No. 2000-1663
Application No. 08/691,663
in Simms for a fob with the capabilities of generating a request
signal to a distant location remote to the vehicle location.
Obviousness is tested by "what the combined teachings of the
references would have suggested to those of ordinary skill in the
art." In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA
1981). But it "cannot be established by combining the teachings
of the prior art to produce the claimed invention, absent some
teaching or suggestion supporting the combination." ACS Hosp.
Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ
929, 933 (Fed. Cir. 1984). And "teachings of references can be
combined only if there is some suggestion or incentive to do so."
Id. Here, the prior art contains none. In fact, the advantages
of utilizing a fob to communicate with a location remote from the
vehicle are not appreciated by the prior art applied by the
examiner.
Instead, it appears to us that the examiner relied on
hindsight in reaching his obviousness determination. However,
our reviewing court has said, "[t]o imbue one of ordinary skill
in the art with knowledge of the invention in suit, when no prior
art reference or references of record convey or suggest that
knowledge, is to fall victim to the insidious effect of a
hindsight syndrome wherein that which only the inventor taught is
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