Ex parte AVITALL - Page 9




          Appeal No. 1998-1045                                                        
          Application 08/482,674                                                      


          art to produce the claimed invention, absent some teaching,                 
          suggestion or incentive supporting the combination.  The                    
          extent to which such suggestion must be explicit in, or may be              
          fairly inferred from, the references, is decided on the facts               
          of each case, in light of the prior art and its relationship                
          to the appellant’s 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                    
          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. 1992); Lindemann Maschinenfabrik               
          GmbH v. American Hoist and Derrick Co., 730 F.2d 1452, 1462,                
          221 USPQ 481, 488 (Fed. Cir. 1984).                                         


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