Appeal No. 1999-1505 Page 5
Application No. 08/638,454
The obviousness rejection
We will not sustain the rejection of claims 12 through 19
under 35 U.S.C. § 103.
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 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. 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.
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