Appeal No. 2005-0545
Application No. 09/989,019
the claimed invention.
However, Gorman cautioned, 933 F.2d at 986, 18USPQ2d at 1888:
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
applicant. . . . “‘Obviousness can not be established
by combining the teachings of the prior art to produce
the claimed invention, absent some teaching, suggestion
or incentive supporting the combination.’” In re Bond,
910 F.2d 831, 834, 15 USPQ2d 1566, 1568 (Fed. Cir. 1990)
(quoting Carella v. Starlight Archery and Pro Line Co.,
804 F.2d 135, 140, 231 USPQ 644, 647 (Fed. Cir. 1986).
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 applicant’s 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 applicant’s structure as a template and
selecting elements from references to fill the gaps. . . .
The references themselves must provide some teaching whereby
the applicant’s combination would have been obvious.
Accordingly, we first consider whether the combined prior art
is reasonably pertinent to the problem with which the inventor is
concerned, i.e., analogous “for the control and treatment of a
cosmetic condition known as cellulite” (Specification (Spec.),
p. 1, l. 8-9). Pugliese’s “[t]reatment is directed at controlling
the breakdown of collagen and reducing the fat mass to a smaller
volume” (Spec., p. 1, l. 9-10). Pugliese recognizes that localized
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