Appeal No. 2005-2408 Παγε 5
Application No. 09/783,548
strip includes a thermal element 36 capable of providing heat which comprises an
exothermic composition comprising oxidation chemistry (col. 4, lines 13 to 17; Fig. 2).
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
1885, 1888 (Fed. Cir. 1991) (citations omitted). That is, something in the prior art as a
whole must suggest the desirability, and thus the obviousness, of making the
combination. See In re Beattie, 974 F.2d 1309, 1312, 24 USPQ2d 1040, 1042 (Fed.
Cir. 1992); Lindemann Maschinenfabrik GmbH v. American Hoist and Derrick Co., 730
F.2d 1452, 1462, 221 USPQ 481, 488 (Fed. Cir. 1984).
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