Appeal No. 2003-0414 Page 9
Application No. 09/833,831
The appellants' argument
The appellants argue (brief, pp. 4-7) that there is no suggestion, absent the use
of their disclosure, for a person of ordinary skill in the art at the time the invention was
made to have applied the measurement indicia taught by Blubaugh into Cubbler's
suspended ceiling system.
Our determination
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 appellants. 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 appellants' invention. As in all determinations under 35 U.S.C.
§ 103, the decision maker must bring judgment to bear. It is impermissible, however,
simply to engage in a hindsight reconstruction of the claimed invention, using the
appellants' 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
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