Appeal No. 1998-1772 Page 9
Application No. 08/578,047
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. 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
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 view that the suggestion to combine
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