Appeal No. 1998-1533 Page 17
Application No. 08/411,202
time the invention was made to a person having ordinary skill
in the art to "have provided the structure of Hummel with a
circumference like that of Feldmann, in order to provide a
consistent braking effect under rotational circumstances."
The appellants argue (brief, pp. 12-13) that there is
simply no suggestion in the applied prior art to have combined
the teachings of Hummel and Feldmann to have arrived at the
claimed invention. We do not 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 appellants. 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 appellants' invention. As stated earlier, it is
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