Appeal No. 2003-0104 Page 8
Application No. 09/659,792
Claims 3, 4, 6, 8 and 10
The decision of the examiner to reject dependent claims 3, 4, 6, 8 and 10 under
35 U.S.C. § 103 is reversed for the reasons provided above with respect to independent
claims 1 and 7. We have reviewed the reference to Hussain applied in this rejection
under 35 U.S.C. § 103 but find nothing therein which makes up for the deficiencies of
Pulli discussed above with respect to claims 1 and 7.
Claims 11 to 13
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. 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 appellant's combination would
have been obvious. In re Gorman, 933 F.2d 982, 986, 18 USPQ2d 1885, 1888 (Fed.
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