Appeal No. 1997-0174 Page 11
Application No. 08/302,207
would have modified the sequencing valve of the Admitted Prior
Art to have included a Geneva drive. We agree.
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 appellant. 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 appellant'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 the
appellant's structure as a template and selecting elements
from references to fill the gaps. The references themselves
must provide some teaching whereby the appellant's combination
would have been obvious. In re Gorman, 933 F.2d 982, 986, 18
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