Appeal No. 1997-4452
Application No. 08/653,978
the facts of each case, in light of the prior art and its relationship to the appellants'
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
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). In determining
obviousness/nonobviousness, an invention must be considered "as a whole," 35 U.S.C. §
103, and claims must be considered in their entirety. Medtronic, Inc. v. Cardiac
Pacemakers, Inc., 721 F.2d 1563, 1567, 220 USPQ 97, 101 (Fed. Cir. 1983). Since the
limitation that mezzanine outline data defining a second plot of the desired outline is
formed wherein the desired outline is upwardly scaled from the target outline data onto a
mezzanine grid is not taught or suggested by the applied prior art, we will not sustain the
6
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007