Appeal No. 1998-2035
Application 08/458,783
fairly inferred from, the references, is decided on the facts
of each case, in light of the prior art of record and its
relationship to the appellants’ invention. As in all
determinations under 35 U.S.C. § 103, the decisionmaker 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, 986-87, 18 USPQ2d 1885, 1888 (Fed. Cir.
1991) (citation 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).
With this as background, we turn to the examiner’s
rejection of claims 1-15 under 35 U.S.C. § 103 as being
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