Appeal No. 2000-0895
Application No. 08/754,797
bear. 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 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).
After reviewing the combined teachings of the applied
prior art, we reach the conclusion that the subject matter of
claims 22, 28 and 42 would not have been suggested to one of
ordinary skill in the art at the time the invention was made.
Specifically, we agree with the appellants that there is no
suggestion, motivation, or teaching in the applied prior art
whereby a person of ordinary skill would have been instructed
to
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007