Appeal No. 1999-1735 Page 8
Application No. 08/745,978
references individually when the rejection is predicated upon
a combination of prior art disclosures. See In re Merck & Co.
Inc., 800 F.2d 1091, 1097, 231 USPQ 375, 380 (Fed. Cir. 1986).
Second, the appellants argue there is no suggestion,
absent impermissible hindsight, to combine the references as
proposed by the examiner. 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. It is
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
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