Appeal No. 95-1231
Application No. 07/689,215
existence of all of the components. There must be some reason, suggestion, or
motivation found in the prior art whereby a person of ordinary skill in the field of the
invention would make the substitutions required. That knowledge can not come from the
appellants' invention itself. Diversitech Corp. v. Century Steps, Inc., 850 F.2d 675,
678-79, 7 USPQ2d 1315, 1318 (Fed. Cir. 1988); In re Geiger, 815 F.2d 686, 688, 2
USPQ2d 1276, 1278 (Fed. Cir. 1987); Interconnect Planning Corp. v. Feil, 774 F.2d
1132, 1143, 227 USPQ 543, 551 (Fed. Cir. 1985). 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 invention. It is impermissible,
however, simply to engage in a hindsight reconstruction of the claimed invention, using
appellants' disclosure as a template and selecting elements from references to fill the
gaps. In re Gorman, 933 F.2d 983, 986-987, 18 USPQ2d 1885, 1888 (Fed. Cir. 1991).
We find no reasonable suggestion for modifying Bing other than the disclosure provided by
the applicants as to the specific aspects of the claimed method. The examiner has not
established that it would have been obvious to one of ordinary skill in the art, at the time of
the invention, to modify the method of Bing in such a manner as to arrive at the claimed
method.
The rejection under 35 U.S.C. § 103 is reversed.
Summary
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