Appeal No. 2000-1474 Page 16
Application No. 08/962,902
Claims 2, 8, 22, 24-30 and 34-37
We will not sustain the rejection of claims 2, 8, 22, 24-
30 and 34-37 under 35 U.S.C. § 103.
The test for obviousness is what the combined teachings
of the references would have suggested to one of ordinary
skill in the art. See In re Young, 927 F.2d 588, 591, 18
USPQ2d 1089, 1091 (Fed. Cir. 1991) and In re Keller, 642 F.2d
413, 425, 208 USPQ 871, 881 (CCPA 1981). 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. 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
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