Ex parte GAINES - Page 11




          Appeal No. 1999-0286                                      Page 11           
          Application No. 08/777,413                                                  


          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               
          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,                







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