Appeal No. 1998-1533 Page 18
Application No. 08/411,202
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 combined
teachings of Hummel and Feldmann would have made it obvious at
the time the invention was made to a person having ordinary
skill in the art to have provided a disc brake assembly with a
brake ring as taught by Feldmann with each of the twelve brake
pads thereof made and shaped in the manner taught by Hummel.
In our view, the resulting structure from this combination of
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