Appeal No. 1997-0174 Page 12
Application No. 08/302,207
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).
Thus, teachings of references can be combined only if
there is some suggestion or incentive to do so. Here, the
prior art contains none. In that regard, while Schirm does
teach the use of a Geneva drive in a gas indicator apparatus,
Schirm does not contain any teaching or suggestion to have
modified the Admitted Prior Art to have used a Geneva drive as
a gear reducer to increase the amount of torque provided by
the turbine to the selector as set forth in various manners in
the claims under appeal. Given the disparate nature of the
Admitted Prior Art's CYCLE-JET system and Schirm, it appears
to us that the examiner relied on impermissible hindsight in
reaching his obviousness determination. However, our
reviewing court has said, "To imbue one of ordinary skill in
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