Appeal No. 2004-1312 Page 6
Application No. 08/710,554
For the reasons set forth above, the decision of the examiner to reject claim 57,
and claims 58 to 60, 62 and 64 to 69 dependent thereon, under 35 U.S.C. § 102(b) as
being anticipated by or, in the alternative, under 35 U.S.C. § 103 as obvious over
Maeda is reversed.
Rejection 2
We will not sustain the rejection of claims 57 to 60, 62 and 64 to 69 under
35 U.S.C. § 103 as being unpatentable over Nason in view of Doi.
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. 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. Cir. 1991) (citations omitted).
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