Appeal No. 98-0985 Page 10
Application No. 08/271,022
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 this case, it is our opinion that the teaching,
suggestion or incentive supporting the combination comes from
the applied prior art and not from impermissible hindsight.
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