Appeal 2006-2253
Application 10/464,595
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). In determining obviousness/nonobviousness, an invention must be
considered "as a whole," 35 U.S.C. § 103, and claims must be considered in
their entirety. Medtronic, Inc. v. Cardiac Pacemakers, Inc., 721 F.2d 1563,
1567, 220 USPQ 97, 101 (Fed. Cir. 1983).
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